TTAB Finds WORKSUITES Merely Descriptive and Confusable With SUITEWORK for Office Space Leasing

In a 49-page opinion, the Board sustained this opposition to registration of the mark WORKSUITES, in standard character and design form, for providing virtual office services and leasing of office space, in view of the registered mark SUITEWORK for rental of office space and management services regarding same. The Board spent nearly half of the decision considering and denying applicant's counterclaim that alleged a lack of bona fide intent on the part of opposer when he filed the application underlying his SUITEWORK registration. The Board also found the mark WORKSUITES to be merely descriptive of applicant's services. Shawn Hayden v. WorkSuites - IP Holdings LLC, Opposition No. 91249435 (July 6, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).

Bona Fide Intent: Applicant claimed that Opposer Shawn Hayden did not have a bona fide intent to use the mark SUITEWORK as an individual, but rather intended a business entity to use the mark. The Board was unimpressed with that argument. "It is clear from t record that Opposer is the 'leading light' or owner of a family enterprise engaged in an orthopedic medical practice and an associated real estate company from which Opposer renders his orthopedic medical practice. At the time Opposer filed his application, he had a bona fide intent to use the mark by himself, through his medical practice or through his realty company all of which he controlled. Opposer, his medical practice and his realty company are for all practical purposes the same entity."

Mere Descriptiveness of WORKSUITES: The Board took little time in finding the term WORKSUITES to be merely descriptive of applicant's services: "An individual or business looking for virtual office services or executive office space does not have to exercise a multi-stage reasoning process to understand that WORKSUITES means a group of rooms for conducting business." Applicant did not plead acquired distinctiveness as an affirmative defense, and so the Board did not consider that issue. The Board did find, however, that the mark WORKSUITES in the design form shown above, is registrable with a disclaimer of the word.

Likelihood of Confusion: Because the involved services are legally identical, the Board presumed that they travel in the same, normal channels of trade to the same classes of consumers. However, "[by] the inherent nature of the services, relevant consumers will exercise a high degree of purchasing care when selecting a vendor providing a shared office environment."

As to the marks, the careful consumers will recognize the double entendre in the SUITEWORKS mark [SWEET WORKS - get it?], but they "will likely focus on the literal meaning of the term which is similar to the meaning and commercial impression engendered by Applicant’s marks WORKSUITES." Moreover, the design elements in applicant’s WORKSUITES and design mark are not sufficient to distinguish the marks. 

The Board concluded that the marks are similar in terms of appearance, sound, connotation and commercial impression.

And so the Board found confusion likely and it sustained Opposer's Section 2(d) claim.

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TTABlogger comment: To paraphrase Jackie Gleason, how suite it isn't!

Text Copyright John L. Welch 2022.