TTAB Sustains eBay's Section 2(d) Opposition to AFREBAY & Design for Advertising and Payment Processing Services

The Board sustained eBay's opposition to registration of the mark shown first below, for advertising and payment processing services, finding confusion likely with the registered and well-known mark EBAY in standard character form and the stylized version shown second below, for legally identical services. Applicant's evidence of third-party use and registration of marks containing the word "bay" failed to make a dent in the strength of the EBAY marks. This summary will attempt to hit the high points of the 61-page opinion. eBay Inc. v. Afrebay, Inc., Opposition No. 91266958 (January 29, 2024) [Not precedential] (Opinion by Judge Christopher C. Larkin).

Applicant submitted dozens of third-party registrations and uses of marks containing the word "bay" but none containing the term “ebay.” Moreover, because the involved services "are literally or legally identical, the universe of relevant third-party uses of BAY-formative marks here is very small."

Five relevant third-party registrations, and four relevant third-party uses of BAY-formative (not EBAY-formative) marks, have negligible, if any, probative value on either the conceptual or commercial strength of the EBAY word mark. “‘This is a far cry from the large quantum of evidence of third-party used and third-party registrations that was held to be significant in both’” of the Federal Circuit’s seminal third-party mark cases [Jack Wolfskin and Juice Generation].

The Board found that "[t]he conceptual and significant commercial strength of the EBAY word mark emerges unscathed from Applicant’s scattershot challenge." The fifth duPont factor ("[t]he fame [or strength] the prior mark) "strongly supports a conclusion of a likelihood of confusion," while the sixth factor ([t]he number and nature of similar marks in use on similar goods [or services]) is neutral.

Turning to a comparison of the marks, the Board began by observing that the identity of the involved services and the "significant commercial strength" of the EBAY mark reduced the degree of similarity between the marks needed to establish a likelihood of confusion.

The Board found that AFREBAY is the dominant portion of Applicant’s mark because it is most likely to make a greater impression upon purchasers, to be remembered by them, and to be used by them to request the services. After a lengthy and thorough analysis of the similarities and differences between the mark in terms of appearance, sound, connotation, and overall commercial, impressions, the Board concluded that the first DuPont factor supports eBay's claim of likely confusion. As to the payment processing services, the Board observed that consumers "could readily view Applicant’s mark as a variant of Opposer’s mark pertaining to credit card and debit card transactions involving buyers or sellers in Africa."

There are differences between Applicant’s mark and both the EBAY Standard-Character Word Mark and EBAY Lowercase Word Mark, particularly in appearance, but Applicant’s mark is more similar than dissimilar in appearance, sound, and meaning to Opposer’s EBAY Standard-Character Word Mark shown in the ’204 Registration, and more similar than dissimilar in sound and meaning to Opposer’s EBAY Lowercase Word Mark shown in the ’423 Registration. The first DuPont factor supports a conclusion of a likelihood of confusion in both Class 35 and Class 36.

And so, the Board sustained the opposition, declining to reach eBay's dilution claim.

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Text Copyright John L. Welch 2024.