TTABlog Test: Is BILT Confusable With BUILT TO INSPIRE for Non-metal Mailboxes?

The USPTO refused to register the mark BILT for "non-metal mailboxes, excluding office products," finding confusion likely with the registered mark BUILT TO INSPIRE for, inter alia, "non-metal mailboxes." Because the goods overlap, a lesser degree of similarity between the marks is necessary to support a Section 2(d) refusal. But what about the marks? Applicant argued that the term "built" is a weak formative, and further that the marks differ in appearance, sound, connotation, and commercial impression. How do you think this came out? In re Architectural Mailboxes, LLC, Serial No. 90581763 (June 23, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

The Board considers the conceptual strength of the cited mark based on the nature of the mark itself, and its commercial strength based on its marketplace recognition. Because BUILT TO INSPIRE is registered on the Principal Register without a claim of acquired distinctiveness, it is presumed to be inherently distinctive.

Applicant argued that the term "built" is weak because many third-parties use the term in marks for furniture, citing 45 registrations in Class 20. However, six of the registrations were cancelled and the remaining 39 had little or no probative value in showing the conceptual weakness of the term "built" because they cover goods "other than, and unrelated to" non-metal mailboxes.

Nonetheless, dictionary definitions of "built" led the Board to conclude that the term "built" means "how or the manner in which Registrant’s identified goods were made, or alternatively . . . strength by the manner of construction. These are well-known meanings of the dictionary term “BUILT” to the average person, suggesting it is a weak term used in its literal sense or by its related meaning." But the Board observed that "even suggestive or weak marks are entitled to protection from the use of … similar mark[s] for legally identical … [goods]."

As to commercial strength, "Applicant did not provide any third-party use evidence that might lessen the commercial strength of Registrant’s BUILT TO INSPIRE mark, or the term “BUILT” within Registrant’s mark."

In sum, we find the cited BUILT TO INSPIRE mark as a whole to be inherently distinctive, with commercial strength being a neutral consideration. Applicant failed to provide sufficient probative evidence of the conceptual or commercial weakness of Registrant’s mark as a whole. On the other hand, we find the term BUILT within Registrant’s mark to be conceptually weak.

Turning to a comparison of the marks, the Board deemed the word BUILT to be the dominant portion of registrant’s mark, since it is the first term in the mark. Applicant did not deny that the terms BUILT and BILT are identical in sound, but it argued that BILT and BUILT TO INSPIRE are "notably different" in appearance, and distinguishable as to sound "because they have different stress patterns, structure, and different dominant acoustic features [; thus,] …[t]he marks do not sound similar because they have different dominant acoustic features and lengths." The Board was unimpressed:

The problem we have with these arguments is that a determination of likelihood of confusion is not made on a purely mechanical basis, counting the number of words, syllables or even letters that are similar or different.

Keeping in mind "the penchant of consumers to shorten marks," the Board found that the marks BUILT TO INSPIRE and BILT "appear and sound more similar than different."

As to connotation, applicant contended the “INSPIRE” in registrant’s mark connotes the characteristics of beauty and lightness. The Board observed, however, that registrant’s mark could be interpreted to mean "strength to spur one on or to guide," whereas applicant’s mark could be interpreted to mean "strength.” "These are reasons to buy non-metal mailboxes, whether they originate from Registrant or Applicant. The likely confusion between the marks, as associated with legally identical goods, is manifest." 

Balancing the relevant DuPont factors, the Board found confusion likely and it affirmed the refusal to register.

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TTABlogger comment: How did you do? BTW: would you find that BUILT TO INSPIRE is a unitary mark with no dominant element?

Text Copyright John L. Welch 2023.