Tuesday, March 20, 2007

Addition of Applicant's House Mark to Registered Mark Avoids Confusion with Latter, Says TTAB

The Board reversed a Section 2(d) refusal of the mark T-Mobile news express (in standard character form) for various telecommunication and information technology services ["news express" disclaimed], finding it not likely to cause confusion with the mark NEWSEXPRESS for electronic telecommunication services. Even though the marks are used on "closely related, if not identical services, marketed in the same trade channels and to the same classes of consumers," the dissimilarity of the marks "outweighs the other factors." In re Deutsche Telekom AG, Serial No. 78492246 (March 7, 2007) [not precedential].

The Examining Attorney argued that Applicant "has simply taken registrant's nearly identical mark, NEWSEXPRESS, and added its T-Mobile house mark to it." [TTABlog question: Why does the registered mark look to me like three words compounded?]

Applicant asserted that T-Mobile is the "primary and prominent term" in its mark, while the term "news express" is secondary and is disclaimed.

The Board found the marks, taken as a whole, to be "quite dissimilar:" they are dissimilar in terms of sight, sound, meaning, and commercial impression. The Board stated that it agreed "with Applicant and the Trademark Examining Attorney that 'news express' is an extremely weak source-identifier" for the identified services. [TTABlog note: Actually, the Examining Attorney didn't say that "news express" was "an extremely weak source-identifier;" she said it was "merely descriptive" and therefore she required its disclaimer.]

In short, the Board found that the addition of the house mark T-Mobile is sufficient to avoid a likelihood of confusion.

"See Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) [Applicant's NORTON MCNAUGHTON ESSENTIALS trademark for women's clothing is not confusingly similar to opposer's registered mark ESSENTIALS mark for similar goods]. In the instant case, as in Knight Textile, the house mark is deemed to be the primary and most distinctive element of the composite mark."

The Board therefore reversed the refusal to register.

TTABlog comment: There is a major difference between this case and Knight Textile. There, the record included 23 third-party registrations for clothing items in which the marks included the word ESSENTIALS. Those third-party registrations corroborated the dictionary definition of "essentials."

Here, there apparently was no similar evidence. There was, however, the Examining Attorney's assertion that "news express" is merely descriptive of Applicant's services. Is that enough to allow the TTAB to ignore the registration for NEWSEXPRESS? Or should the TTAB, based on this record, have required additional evidence before stripping the registered NEWSEXPRESS mark of all protection? I think the latter.

Text Copyright John L. Welch 2007.


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