Friday, June 12, 2009

Test Your TTAB Eyeball-Ability With These Five "CL" Stylized Marks for Jewelry

Put on your Section 2(d)-colored glasses and cast your analytical eyes on these five CL (Stylized) marks. Applicant Sajen, Inc. sought to register the mark shown on the right for jewelry. The PTO refused registration because it found the mark confusingly similar to four other CL (Stylized) marks (shown below), three of them registered for jewelry and the fourth for on-line retail services featuring jewelry. How do you see it? In re Sajen, Inc., Serial No. 77257189 (June 4, 2009) [not precedential].

Remember that when the goods/services are identical or closely related, a lesser degree of similarity between the marks is necessary to support a determination that confusion is likely. And remember that for word or letter-and-design marks, it is usually the word or letter that is the dominant portion of the mark, since that is the part that customers will vocalize.

On the other hand, if the four registered CL marks can co-exist on the Register, why not a fifth? Aren't those registered marks pretty narrow in scope? But isn't Applicant's mark rather non-distinctive? I mean, if the mark had some fancy design element to it, that's one thing, but it's almost like a standard character mark, and why should Applicant get a broad registration like that?

Okay, made up your mind?

The Board reversed the refusal. It observed that each of the first three cited marks is "extremely stylized and striking."

Indeed, the degree of stylization of the letters which form each of the above marks is so high that "[they are] therefore in the gray region between pure design marks which cannot be vocalized and word marks which are clearly intended to be." [Really? What about the third one? - ed.]

According to the Board, these three marks are "entirely different in appearance from Applicant's mark. The stylization of these three cited marks "renders the letter 'CL' therein virtually unrecognizable or so subordinate to the overall commercial impressions as to make it unlikely that purchasers would associate applicant's mark with any of these marks." [See the third one! - ed.]

As to the fourth, its visual impression is "quite different" from Applicant's mark because the former includes a "prominent and integral floral type design."

Applicant argued that the four registered marks are weak marks entitled to a narrow scope of protection. The Board disagreed, noting that third-party registrations may be used like a dictionary to show that a mark is descriptive or suggestive, but here "it is not clear what the descriptive of suggestive significance of the letters 'CL' are [is? -ed.] in relation to jewelry." [That's not the point. I think the argument is that the co-existence of the four registered marks shows that, in the PTO's view, consumers can distinguish between marks even though they include the same letters "CL." -ed.]

In any case, the Board summarized as follows:

... the marks in each of the cited registrations are more than merely presentations of the letters “CL.” Three of the marks are extensively stylized and striking; the other mark includes a prominent design element which is integrated with the letters "CL." As a result, each of the cited marks differs in appearance and creates a different commercial impression from applicant’s CL mark.

And so the Board reversed the refusal.

TTABlog comment: I think Applicant's mark is so non-stylized that its virtually a standard character mark. Consumers are not likely to remember anything about its stylization, but rather will remember it simply as "CL." When they see the other marks, won't consumers think that these more stylized marks may just be fancy versions of Applicant's simple "CL" mark?

Text Copyright John L. Welch 2009.


At 8:19 PM, Anonymous Anonymous said...

I concur. I NEVER would have guessed that result. All I can say is what was the board smoking when they came to that result?

At 10:20 AM, Anonymous Anonymous said...

The first three cited marks are essentially goldsmith marks, something unlikely to be used in general sale; the Applicant's mark isn't likely to be a goldsmith's mark, and the fourth cited mark is signficantly different from the applied mark.

At 1:30 PM, Blogger John L. Welch said...

Maybe goldsmith will opppose once this application is published for opposition.


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