Tuesday, May 22, 2007

"H2OPTIX" and "H2OVERX" Confusingly Similar for Sunglasses, Says TTAB

The Board affirmed a Section 2(d) refusal to register the mark H2OVERX for sunglasses and related goods, finding the mark likely to cause confusion with the mark H2OPTIX, registered for identical or related goods. In re Dioptics Medical Prods., Inc., Serial No. 78453049 (May 4, 2007) [not precedential].

Applicant Dioptics started off behind the proverbial 8-ball, because when identical goods are involved, a lesser degree of similarity in the marks is required to support a determination of likely confusion. The Board applied its usual formula to the consideration of the marks: both marks begin with H2O and end with X, both share "the same meaning in that H2O in both marks connotes water and suggests some relevance to water to the goods, i.e., that they are used in or near water." Both mark also telescope the O in H2O with terms that being with O, OPTIX and OVERX.

The Board noted that the term OPTIX, a slight misspelling of OPTIC, is somewhat suggestive, but it found that the similarities in the marks overshadow any differences.

Applicant argued that the marks differ in sound, since one has five syllables and the other four. The Board, however, dragged out the old saw that "[t]here is no correct pronunciation of a mark and applicant's mark also could be pronounced in four syllables." Applicant also contended that the registered mark is weak, but the Board saw no evidence of third-party use or registration of the mark H2O "for these or any types of goods." While H2OPTIX may be somewhat suggestive, the Board noted that these goods may be bought without a great deal of care, and so the scope of protection afforded the mark H2OPTIX "certainly encompasses these circumstances."

The Board therefore affirmed the refusal.

TTABlog comment: Frankly, I don't think the marks are close enough for confusion to be likely. The Board's assertion regarding "no correct pronunciation" is particularly bogus. Why wouldn't the ordinary consumer pronounce one mark as H-TWO-OPTICS and the other as H-TWO-OVER-X? And why would any ordinary consumer pronounce H-TWO-OVER-X in four syllables?

Also, where's the proof that sunglasses are purchased without a great deal of care? When I see people buying, they seem to spend an inordinate amount of time in the process. Can the Board just assume, via some sort of judicial notice, that sunglasses are not carefully purchased?

Text Copyright John L. Welch 2007.


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