TTABlog Test: Is "ACUITI" Confusable with "QIACUITY" for Medical Testing Services?

The USPTO refused registration of the mark ACUITI for cancer screening and genetic testing software, finding confusion likely with the registered mark QIACUITY for identical and overlapping services. The second and third DuPont factors weighed heavily against the applicant, the fifth and sixth were neutral, and the fourth factor - consumer sophistication - favored the applicant. But what about the marks? How do you think this came out? In re GRAIL, LLC, Serial No. 90777742 (August 29, 2024) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Board first noted that because some of the parties' services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Applicant argued that the marks at issue differ in appearance, sound, connotation and commercial impression in light of the uncommon "QI" in the cited mark, because QI is an alternative spelling of CHI, and because the "QI" prefix is the "primary, dominant, and most memorable element of the cited mark."

The Board, however, found the marks to be similar because "Applicant’s mark is the phonetic equivalent of a significant portion of the cited mark." As to appearance and sound "both marks contain the same string of letters 'ACUIT,' which would be pronounced identically." There was no evidence regarding an alternative meaning of QI, or why registrant chose those letters; since the registrant's name is Qiagen GmbH, QI may be an abbreviation of that name. Furthermore, the purported rarity of the letters "QI" "does not change the visual impression of the cited mark because the visual presentation forms a single word, "which when viewed in its entirety suggests that it is part of an ACUITY brand."

Applicant has merely adopted the phonetic equivalent of a significant portion of the cited mark. Adding or deleting terms from a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).

Moreover, the Board pointed out that since the cited mark is in standard characters, it may be displayed in any font style, size or color.

In other words, we must anticipate Registrant’s cited mark being displayed in a manner in which there is more emphasis on the latter part of the mark, e.g., qiACUITY, thereby appearing quite similar to Applicant’s ACUITI mark and both evoking the term ACUITY which is defined as “keenness of perception.” As such, both marks are similar in connotation and overall commercial impression.

In sum, the Board found that the marks are "more similar than dissimilar in appearance, sound, connotation, and overall commercial impression due to the common presence of the phonetically identical term 'acuity.'"

The Board concluded that confusion is likely because the first, second, and third DuPont factors outweighed the fourth DuPont factor (consumer sophistication).

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TTABlogger comment: This nose-of-wax approach to consideration of the display of standard character marks is rather troublesome, don't you think? Note that the registrant does not display its mark as qiACUITY as the Board hypothesized, but as QIAcuity.

Text Copyright John L. Welch 2024.