TTAB Reverses Section 2(d) Refusal of "CREATIVE HOME IDEAS" in view of Weakness of Two Cited Marks
In a dubious decision, the Board reversed a Section 2(d) refusal of the mark CREATIVE HOME IDEAS for various home decor products, including pillows, curtains, and rugs [HOME Disclaimed], finding confusion unlikely with the registered marks CREATIVE HOME [HOME disclaimed] and HOMEIDEAS for overlapping and related goods. In light of applicant's third-party registration evidence and the ordinary meanings of CREATIVE, HOME, and IDEAS, the Board accorded the cited registrations an "attenuated scope of protection." In re YMF Carpets, Inc., Serial No. 90822795 (June 4, 2024) [not precedential] (Opinion by Judge Karen S. Kuhlke).
The Board observed that "[g]enerally, the existence of third-party registrations cannot justify the registration of another mark that is so similar to a previously registered mark as to create a likelihood of confusion, or to cause mistake, or to deceive." However, under Jack Wolfskin and Juice Generation, a large number of registrations may indicate "that a mark or a portion of a mark has a normally understood descriptive or suggestive connotation, leading to the conclusion that the term or mark component is relatively conceptually weak."
Here, the Board considered 18 third-party registrations for various combinations of the terms CREATIVE or IDEAS. However, only three included the word CREATIVE for goods that are similar to the goods in the registrations and two included the word IDEAS for goods that are similar to those goods. Nonetheless, the Board noted that the word HOME describes the nature of the goods and is disclaimed in both applicant's mark and one of the cited registrations. Furthermore, CREATIVE and IDEAS are general terms that "suggest an attribute (creative) or recommendations (ideas) for home decoration."
Overall, we find these marks are comprised of weak terms, and the combination of the terms in various forms does not measurably increase their distinctiveness. We therefore accord these registrations an attenuated scope of protection.
Comparing the marks, the Board found their connotations and commercial impressions to be "sufficiently different." CREATIVE HOME connotes a place, whereas CREATIVE HOME IDEAS "focuses on what kind of ideas are being offered for the home." "In the case of HOMEIDEAS, that mark presents as a single word or, even viewed as separate words, as a single thought, in contrast to the CREATIVE HOME IDEAS mark that is a phrase modified by the word CREATIVE."
The Board concluded that, "despite the identical and closely related goods, in view of the weakness of the marks, Applicant’s mark is sufficiently different so as to obviate likely confusion."
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TTABlogger comment: The third-party registration discussion was rather murky. BTW, I don't know why, but I've grown to hate the word "obviate."
Text Copyright John L. Welch 2024.
posted by John L. Welch @ 6/06/2024
5 comments
5 Comments:
I have been practicing for a long time and it seems in most cases when counseling clients about trying to protect a (weak) trademark in a crowded field, they understand the risks, but they are not really trying to create market confusion. They are choosing common terms that customers understand. These types of trademarks need help with source identifying and are often accompanied by a house brand or other trademarks when marketing the product/service. It is hard to tell a client that there are 5 other similar descriptives names registered but the US PTO may not want a 6th. I would opt to let the market dictate where confusion arises. A third party can oppose if it believes confusion is likely. I may even be in favor of an examiner having the right to approve for pub but send along to the possible third-party marks that they believe may be problematic. I would much rather have two businesses looking at the issues from a realistic point of view, than an examiner trying to judge confusion issues in a vacuum.
What a bunch of garbage. Next go around they'll say it's all descriptive and refuse registration--which all of them really are.
I agree with the observations of Terrence McAllister and with Eddie's frustration. We all want to be good counselors to our clients. It would be easier if the rules of the road were clearer and more consistently applied.
Likelihood of confusion is a public policy issue and the USPTO is the first line of defense in protecting the public from confusion. And yes, the law is as such that confusion issues under Section 2(d) are judged in a vacuum. That is intentional. Intent of the Applicant/user or its actual use in the marketplace is not the issue here. In the case at hand, the marks are quite similar -- albeit the lack of inherent strength. I believe this was a righteous refusal. Let the TTAB decide!!
John,
"obviate" is going over the top when used in relation to confusion. One can minimize the likelihood of confusion, but not completely obliterate it. That's my two pennyworth. I can see why the trademark scraped through the barrier of being merely descriptive, it is allusive, not making a direct reference to a character or quality of the goods.
Terrence,
Hopefully your clients are prepared to seek registration before entering the market. "Jumping the gun" can be very costly.
Bob Kelson
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