Thursday, January 26, 2006

TTAB Unconvincingly Finds "GOSMILE PM" and "P.M." Confusingly Similar for Toothpaste

In a decision that may stick in your teeth like an errant poppy seed, the Board affirmed a Section 2(d) refusal of the mark GOSMILE PM for toothpaste, finding the mark likely to cause confusion with the registered mark P.M. for "toothpaste and gel." In re GoSMILE, Inc., Serial No. 76518244 (January 20, 2006) [not citable]. The Board's reasoning, however, was less than convincing.

Applicant GoSMILE did not contest the issue of the relatedness of the goods, but instead argued that the first du Pont factor, the dissimilarity of the marks, was dispositive. It contended that the dominant feature of its mark is GOSMILE (a registered mark in itself), that the PM portion of its mark was disclaimed as required by the Examining Attorney because of its descriptiveness, and that the first portion of a mark is often "that which catches the consumer's eye."

The Board noted once again that, when the goods are identical, the "degree of similarity between the marks necessary to support the conclusion of likely confusion declines." The Examining Attorney maintained that "the addition of the applicant's house mark to two otherwise identical marks will not obviate confusion." [TTABlog comment: the Board inexplicably ignored the TTAB's citable decision in Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005), in which the addition of the house mark NORTON McNAUGHTON to the registered mark ESSENTIALS for clothing resulted in a registrable mark. I am informed that the Knight Textile case was brought to the Board's attention at oral argument.]

Applicant argued that the term "P.M." is weak; indeed, the Examining Attorney had required a disclaimer of PM in Applicant's mark, deeming it "merely descriptive because it identifies the period of use of the toothpaste." But the Board was not satisfied, pointing out that the PTO had not offered any evidence to support the disclaimer requirement, nor did Applicant offer evidence "indicating that PM is merely descriptive for toothpaste or tooth gel." [TTABlog comment: maybe it was so obvious that neither the PTO nor the applicant thought proof was needed.]

Furthermore, the Board cited In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985) for the proposition that the disclaimer of a word "cannot affect the scope of protection to which another's mark is entitled." [TTABlog comment: In National Data, however, the disclaimer was voluntary and was done "as a tactical strategy, believing it would assist in avoiding a holding of likelihood of confusion with the cited mark."]

As to whether the addition of GOSMILE to PM is sufficient to distinguish the marks, the Board summarily asserted [without evidentiary support] that "GOSMILE and PM are not combined in a manner which in any way alters the impression of PM alone." It then concluded [again without evidence] that:

"Contrary to applicant's argument, consumers are just as likely and perhaps even more likely to view GOSMILE PM as identifying another product from the owner of the P.M. mark as they are to view it as a new product from the owner of the GOSMILE mark."

The Board therefore affirmed the Section 2(d) refusal.

TTABlog final comment: Once again, I am left to wonder why there isn't a 14th du Pont factor: common sense.

TTABlog update: Applicant GoSMILE sought review of this decisiohn by way of civil action (here), and then reached an agreement with the PTO (here) remanding the application to the PTO for further prosecution -- all for the purpose of permitting GoSMILE to submit additional evidence regarding the descriptiveness issue.

Text Copyright John L. Welch 2006.


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