Friday, April 08, 2011

WYHA? TTAB Affirms 2(d) Refusal of LOWFARES.COM over LOWESTFARE.COM for Travel-Related Services

Applicant huffed and puffed but failed to get off the ground in seeking reversal of this Section 2(d) refusal to register the mark LOWFARES.COM for on-line price comparison and informational services in the field of travel. The Board found the mark likely to cause confusion with the registered mark LOWESTFARE.COM for Internet travel agency services. Applicant even submitted survey evidence, a rarity during trademark prosecution, but the Board found that the survey had little probative value. Take a good look. Would you have appealed? In re, Serial No. 77542010 (March 28, 2011) [not precedential].

Not surprisingly, the Board found the marks to be "very similar in terms of sound, appearance, meaning and commercial impression."

As to the services, Applicant feebly argued that the involved services are mutually exclusive and unrelated. The Board, however, found them to be "closely related." "The fact that applicant's consumers have to click on a link to complete a booking is not sufficient to distinguish the services sufficiently to obviate a likelihood of confusion."

The Board also found that the trade channels and classes of purchasers overlap. As to the conditions of sale, the Board agreed with Applicant that consumers purchasing transportation or lodging exercise a "higher degree of care." But that fact does not outweigh the other relevant du Pont factors.

Applicant lamely pointed to the lack of actual confusion, but the Board observed once again that the test is likelihood of confusion. Moreover it was unclear whether there has been any meaningful opportunity for confusion to occur, since Applicant advertises via sponsored links, whereas Registrant does not, and so Registrant's advertisements "will not necessarily appear on the first page of the search result."

Applicant also pointed out that Registrant had not objected to its use of the applied-for mark. The Board found this fact to have minimal probative value, since the issue here is registration, not use. Moreover, it would require "impermissible speculation as to whether registrant is aware of applicant's use and if so why it has not objected to that use."

Finally, Applicant relied on an Ever-Ready survey purportedly demonstrating no likelihood of confusion, but the Board found it of little probative value.

[W]e find that it is compromised by the initial statement to the survey participants. In the preliminary statement of purpose, the participants are told “that the research [is] related to website names.” The reference to “website names” does not prepare the participant to perceive these examples as brands or trademarks but rather more as simply the virtual world’s version of an address. Therefore, it is not surprising that when asked questions about who operates the LOWFARES.COM website, or if the website is operated with the approval or consent of any other company or affiliated with any other company, the vast majority of responses pointed to other unnamed third parties such as “airlines” or “a travel agency” and the next highest was one of the listed well-known websites ORBITZ. It appears clear from the results that the questions referring the participants to “any other company” prompted them to conjure up unnamed third parties.

Although both marks are conceptually weak, "even weak marks are afforded protection." And so the Board affirmed the refusal.

Text Copyright John L. Welch 2011.


At 10:31 AM, Anonymous Morris Turek said...

WYHA? I think this is more a case of WYHFTAITFP ("Would You Have Filed The Application In The First Place")

At 10:59 AM, Blogger John L. Welch said...

Maybe "WHYF?" would be more tweetable.

At 12:12 PM, Anonymous Joshua Jarvis said...

Come on, John, add the trademark designation: WHYA™. You know you want to.


Post a Comment

<< Home