Precedential No. 15: TTAB Affirms Section 2(d) Refusal of UPC for Computer Components, Rejecting "Something More" Requirement When Only Goods are Involved

In a precedential decision, the Board affirmed a refusal to register the mark UPC for, inter alia, display panels as components of computers and smart phones, finding confusion likely with the identical mark registered for charging cables and power connectors. Applicant Samsung argued that "something more" is required to show relatedness of the goods than the mere fact that some third-party manufacturers sell both types of goods. The Board was not impressed. In re Samsung Display Co., Ltd., Serial No. 90502617 (July 17, 2024) [precedential] (Opinion by Judge Robert H. Coggins).

Since the marks are identical, the first DuPont factor weighed "heavily" in favor of likelihood of confusion. Moreover, in such case, a lesser degree of similarity between the goods is needed to support that finding.

Turning to the second DuPont factor - the similarity and nature of the goods - Examining Attorney Katrina Yang maintained that the goods are related because they are "sold together as part of the same finished product," with the goods often "highlighted or called-out in advertising as being a prominent feature of finished products," especially the display panels and power cable of computer monitors. Many third-party websites highlighted the display panel or screen as an important feature and a selling point. Other websites specify many of the individual components in a laptop computer, including the display and the power cables.

The Board therefore found that "the goods are related because they are each incorporated and used in the same finished electronic products."

Citing Coors Brewing and St. Helena Hospital, Samsung argued that "the fact that some monitors and television manufacturers also sell power cables does not alone imply that consumers will assume that all monitors and televisions have the same source of origin as the power cables. Therefore, “something more” is required to show relatedness between monitors or televisions and power cables."

The Board, however, pointed out that Samsung's reliance on that theory was misplaced. Those two cases involved the relatedness of goods and services, "limiting the requirement for “something more” to circumstances where goods are used in the rendering of services and the relatedness of the goods and services is not evident, well known, or generally recognized." [Coors Brewing involved beer and restaurant services, while St. Helena Hospital concerned hospital-based lifestyle programs and printed materials dealing with fitness.]

As to the third and fourth DuPont factors - the “similarity or dissimilarity of established, likely-to-continue trade channels,” and "conditions under which and buyers to whom sales are made, i.e. ‘impulse’ v. careful, sophisticated purchasing" - Samsung argued that its goods, as components, are sold exclusively to manufacturers of finished products, whereas registrant's goods are finished products themselves and may be purchased separately by retail consumers. The Board noted that Samsung's identification of goods contains no such limitation, and in fact its components may be available to end users and hobbyists who wish to build, repair, or customize their own electronic products. Similarly, registrant's identification of goods is not limited to sales to consumers.

The relevant classes of consumers overlap and, although some purchasers may be sophisticated, others are not, such as hobbyists and gamers who build or repair their own electronic devices. There was no evidence that these ordinary consumers would exercise more than ordinary care.

And so, the Board affirmed the refusal to register

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TTABlogger comment: I guess the Board's clarification of the "something more" requirement made this decision precedential.

Text Copyright John L. Welch 2024.