Thursday, April 21, 2011

Test Your TTAB Judge-Ability: Are "ROOTER, MD" and "ROOTER-MAN & Design" Confusingly Similar for Plumbing Services?

A Corp. opposed an application to register the mark ROOTER, MD for plumbing services [ROOTER disclaimed], claiming likelihood of confusion with its registered ROOTER-MAN & Design mark shown below, for "cleaning and repairing septic systems and clearing clogged pipes and drains." Do you think the marks are confusingly similar? A Corp. dba Rooter Man v. Pete Wood Plumbing and Heating Co., Opposition No. 91187976 (March 21, 2011) [not precedential].

Opposer alleged that its mark is famous in the plumbing field. However, it failed to provide evidence of sales volume or advertising expenses, market share, or frequency of consumer encounters, and in fact did not establish the renown of its mark "to any degree." So this factor was considered "neutral" in the du Pont analysis.

The services involved are overlapping, and therefore the Board presumed that the services are rendered in identical trade channels to the same consumers.

The Board then turned to the crux of the case: the marks. As usual, it found that the word portion of Opposer's mark is dominant, and further that ROOTER-MAN "would be used by purchasers asking for opposer's services."

Moreover, the word ROOTER is the dominant portion of the word portion of the mark. [doubly-dominant? - ed.]

The terms ROOTER and MAN in opposer’s mark are visually distinct from one another because, not only are they separated by a small hyphen, but ROOTER appears in dark letters and MAN appears [in] an outline of white letters. Within the word portion of the mark, we find that ROOTER is the dominant portion thereof. Not only is it the first word in the mark and appears in dark letters, but MAN is likely to be understood as suggesting the person who renders opposer’s services. In this regard, we note that the second term in applicant’s mark is MD and it too is likely to be understood as suggesting the person who renders the services.

Furthermore, there was no evidence in the record of any meaning of ROOTER in the field, nor any evidence of third-party uses. Therefore, the Board concluded that ROOTER is "an arbitrary and strong term" in connection with the involved services.

And so, despite the differences in the marks, the Board found them to be "similar in appearance, sound, connotation, and commercial impression," and it sustained the opposition.

TTABlog comment: I think MAN is the dominant word in Opposer's mark. It seems to stand out more than ROOTER.

And what about that lack of evidence that ROOTER is descriptive? Someone was asleep at the switch. Try a search of the PTO database for marks with the word ROOTER disclaimed, and see what you get.

If I were applicant, I would consider seeking review by way of civil action, where additional evidence is permitted.

Text Copyright John L. Welch 2011.


At 11:13 AM, Anonymous Joshua Jarvis said...

I suppose there's not much the Board can do without any evidence in the record, but the idea that the ROOTER formative is an "arbitrary and strong term" in connection with plumbing services is insane. ROOTER is routinely disclaimed, and there are even a couple of SR registrations where a disclaimer of ROOTER was required.

At 1:30 PM, Anonymous Anonymous said...

This has to be one of the most absurd decisions I have ever seen come from the Board.

Rooter is arbitrary and strong as it relates to "drain cleaning" services? Gimme a break.

There are live registrations for "rooting services, namely rooting of drain and sewage pipes.

Mr. Rooter, Roto-Rooter, Rescue Rooter, ...

Interesting that the Board takes judicial notice in some cases of things it should not, but fails here where a Google or USPTO search is easy? Why waste time at TTAB if you are simply rolling the dice.

At 9:44 AM, Blogger Robert said...

The Board apparently does not actually review the application file even though it forms part of the record. On page 3 of the decision, the Board writes that the application file is part of the record. Presumably that would require the Board to acknowledge that the Applicant disclaimed the exclusive right to use ROOTER and that the Examining Attorney required the disclaimer because ROOTER is "a common term of art used in the plumbing industry" and produced some excerpts of newspaper articles using "rooter" in connection with drain cleaning. Ironically one of the article excerpts used "rooter man" in a descriptive fashion. The Applicant quoted this office action (but not the excerpts) in its brief. Yet somehow the Board can write on Page 12 "there is absolutely no evidence of any meaning of the term ROOTER in relation to the services..." Granted the Applicant could have introduced more evidence and emphasized the term's descriptiveness, but to say there is no evidence on that point is simply wrong.

At 11:54 AM, Blogger No Duh said...

agree completely -- to say "ROOTER" is arbitrary and strong is shocking.

At 12:06 PM, Blogger No Duh said...

utterly shocking -- I agree with the "gimme a break" sentiment -- the only thing arbitrary about ROOTER is the TTAB's analysis.


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