Wednesday, August 06, 2008

TTAB Reverses 2(d) Refusal, Finds "CLIMAX" and "JELLY CLIMAX MAXIMIZER" Not Confusingly Similar for Vibrators

Despite overlapping goods purchased by the same ordinary consumers and moving through the same presumed channels of trade, the Board reversed a refusal to register the mark CLIMAX for adult sexual aids, finding it not likely to cause confusion with the registered mark JELLY CLIMAX MAXIMIZER & Design for vibrators [JELLY CLIMAX disclaimed]. In re Vast Resources, Inc., dba Topco Sales, Serial No. 78692514 (July 31, 2008) [not precedential]

The Examining Attorney focused on the size of the word CLIMAX in the registered mark, while the Applicant pointed to the disclaimer of "JELLY CLIMAX." Apparently concluding that size doesn't matter in this context, the Board found the term MAXIMIZER to be the dominant portion of the registered mark.

The sound of the marks is, of course, "quite dissimilar." As to appearance,the word CLIMAX is "the largest and most distinctive stylistically." However, "given the fact that it is the second of two adjectives modifying the term 'Maximizer,' we cannot agree that the word 'Climax' retains such an elevated status when one is looking to identify the most salient feature of the composite for purposes of discerning commercial impression and connotation." [TTABlog query: CLIMAX is an adjective?]

With regard to connotation, the Board disagreed with the PTO's view that "the meaning prospective consumers acquainted with both marks would draw from registrant's mark is that registrant's listed product offers 'the more intense or maximized' experience available from the respective CLIMAX products." According to the Board, however, the word CLIMAX is suggestive in Applicant's mark but descriptive in Registrant's:

"When used alone by applicant in the context of adult sex toys, the word CLIMAX appears suggestive of the ultimate, intended effect of the goods. However, within the three-word phrase, “Jelly Climax Maximizer,” the word “Climax” is merely descriptive inasmuch as it modifies the word “Maximizer,” and tells the prospective purchaser precisely what the product does. We find this to be true despite the relatively large, stylized letters in which the word “Climax” is presented."

The Board concluded that these marks "are somewhat weak as applied to these goods, and when viewed in their entireties, we find that the respective marks are not confusingly similar."

TTABlog comment: The Board says that the word CLIMAX "appears suggestive of the ultimate intended effect of the goods." Isn't it, in fact, descriptive thereof? How did Applicant avoid a mere descriptiveness refusal? If it isn't, why is it disclaimed in the registered mark.

The strange disclaimer of JELLY CLIMAX in the registration clearly skewed the analysis here. I can see why JELLY is descriptive, but why is JELLY CLIMAX as a phrase descriptive? And if JELLY CLIMAX is descriptive for vibrators, doesn't MAXIMIZER just add another descriptive or laudatory word?

Frankly, in the real world, I think the marks are confusingly similar. The consuming public doesn't know what is or isn't disclaimed in a mark, and would see these two marks as members of the CLIMAX family.

Text Copyright John L. Welch 2008.


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