Wednesday, May 04, 2011

Test Your TTAB Judge-Ability: Are "ITOWNS" and "IVILLAGE" Confusingly Similar for Related News Services?

Managing Attorney Chris Doninger refused registration of the mark ITOWNS, in standard character form, for general circulation newspapers and related websites, finding it likely to cause confusion with the registered mark IVILLAGE for newsletters and websites concerning various issues, including health, astrology, and fitness. The services overlapped, but are the marks too close? In re The Hartford Courant Company, Serial No. 77404276 (April 22, 2011) [not precedential].

The Board found the involved goods to be related, noting that Applicant's newspaper is not limited as to subject matter and presumably encompasses the specific topics listed in the cited registrations. The involved services are similarly related.

"[A]applicant’s goods and services are broadly identified, with no restriction as to topics and issues covered, so we must presume that applicant’s website covers topics of interest to women, children and families, such as parenting, fitness, diet and careers. The fact that applicant’s goods and services may feature information of particular importance to the Hartford, Connecticut metropolitan area is irrelevant because no such limitation is indicated in applicant’s identifications."

Third-party websites and registrations confirmed the relatedness of the goods and services. The Board therefore presumed that the goods and services travel in the same channels of trade to the same classes of purchasers. Those purchasers would include ordinary consumers exercising only ordinary care.

Turning to the marks, Managing Attorney Doninger relied on numerous documents, including thesaurus listings, NEXIS articles, excerpts from the parties' websites, and third-party websites and registrations, in urging that "the ordinary meaning and usage of the terms 'village' and 'town' are so close as to create confusion in the minds of consumers, who clearly are not experts in the technicalities of the definitions of municipalities, nor do they care about such things when surfing the internet for information about current events, politics, horoscopes or fashion."

The Board recognized that the words TOWNS and VILLAGE neither sound nor look alike, but it ruled that their "similarity or identity" in meaning outweighed the differences so that the marks as a whole are similar in commercial impression.

The Board acknowledged that "there may be a distinction between the technical meanings of the two words 'village' and 'towns,'" but pointed out that it is "primarily concerned with the meaning of the marks to the prospective purchasing public (in this case, ordinary consumers), and not to geographers, experts on municipality designations, or linguists."

"Accordingly, as shown by the thesaurus entries, and confirmed by the interchangeability of the words in actual language, we believe that the popular or ordinary meanings of the words 'village' and 'towns' are virtually identical, although there are technical distinctions between the two words. The ordinary meaning and usage of the two words are so close as to render the marks similar in the minds of ordinary consumers, who are not likely to be experts in the definitions of municipalities."

And so the Board concluded that the "substantially similar meaning between 'village' and 'towns' outweighs any difference in sound and appearance." The letter "I" at the beginning of each mark indicates "Internet," and the marks "engender overall commercial impressions that are similar."

It therefore affirmed the refusal to register.

TTABlog comment: Several decades ago, I suggested to a law student working at my firm in Boston, that a good place to start in trademark law would be as an Examining Attorney at the USPTO. I'm happy to report that Chris Doninger took my advice.

Here, the Board panel stated its appreciation for Managing Attorney Doninger's thorough and organized effort in presenting the PTO's evidence. It's good to see the Board commend an Examining Attorney for a change.

Text Copyright John L. Welch 2011.


At 8:14 AM, Anonymous Anonymous said...

Wait a minute, Chris Doninger was a law school classmate of mine. So this lurker will emerge from the shadows to object -- strenuously -- to the "several decades ago" reference!
-- Bob O'Connell

At 8:29 AM, Blogger John L. Welch said...

Sorry about that, Bob. By several I meant two.

At 9:52 AM, Blogger Michael La Porte said...

Really? "iTowns" and "iVillages" confusingly similar?

Calling the balls and strikes on my own, I'd have thought that there wouldn't be even a smidge of a likelihood of confusion.

Epic fail for my personal "Judge-Ability."

I don't disagree with the reasoning about similarities of the meanings and such, but where is the basis for the leap that this similarity overcomes and thus "outweighs" zero similarity in sound and appearance?

I can only speak for THIS consumer, but I wouldn't in a million years figure that the sources of these two things are the same.

At 9:54 AM, Anonymous Anonymous said...

This is a tough one to swallow. Words with very similar meanings now create a likelihood of confusion? As an attorney who spends a significant amount of my time prosecuting trademarks, accounting for this type of refusal will add a lot of uncertainty to the advice I give my clients.

At 10:08 AM, Anonymous Anonymous said...

Chris was my managing attorney before I left the Office. He's a good guy.

Michael Hall

At 11:40 AM, Anonymous Anonymous said...

I tend to agree with "Michael" on this one; there's not a smidge of likelihood of confusion between the terms TOWNS and VILLAGE.

Perhaps it's a regional thing. In the U.S. heartland, a "village" at best connotes a quaint European location, while "town" pretty much describes every incorporated gathering with less than 100,000 people. Around here, that would be almost all of them!

Just don't see it...

At 11:54 AM, Blogger Michael La Porte said...

To be clear, I'm willing to grant 100% similarity in meaning. Even granting that, I'm not sure how this overcomes the lack of similarity in sound and appearance.

I suppose in the context of newspapers and such, this seems especially true where so many marks share similar elements ("herald" "times" "picyune" "courrier" "tribune") and DO NOT (at least to me) convey an implication of a single source.

Would iFitness and iHealth be confusingly similar on similar goods or services?

At 1:25 PM, Anonymous Anonymous said...

Chris' work on his refusal was outstanding, without question. Applicant could have - and failed - to put ANY evidence on record showing that "Village" and Town" are used differently in the newspaper industry.. e.g., Village Voice, "Our Town." I think the evidence was all on the side of the PTO, and the argument that use of these terms in the relevant industry results in different meanings was never made. As a result, you have an unusal decision.

At 3:09 PM, Blogger Michael La Porte said...

"Applicant could have - and failed - to put ANY evidence on record showing that "Village" and Town" are used differently in the newspaper industry."

Is such evidence really necessary? How do you get from ZERO sound similarity and ZERO appearance similarity and then conclude that meaning similarity trumps these things and OVERCOMES these dissimilarity?

Why is it incumbent on applicant to have any evidence of different use in the industry. I take it by this, you mean that such evidence would undermine the premise that I'm willing to grant -- namely that MEANING use is identical. We are still left with, as a poster upthread noted, a "words with similar meanings" test of likelihood of confusion.

iFitness confusingly similar to iHealth?

iSupper confusingly similar to iDinner?

Nothwithstanding any lack of evidence that you posit, I'm still left feeling that when I PERSONALLY see these two marks and know what the goods and services are, I'm not left thinking: wow, there is a likelihood that consumers will think that iVillage and iTowns are similarly sourced.

At 7:57 PM, Anonymous Anonymous said...

A few things - John, I am guessing the folks at the Hartford Courant are not so happy with your suggestion lo those many years ago to Mr. Doninger about now! I am sure they wished he had rather gone off to chase ambulances.

Mr./Ms. Anonymous - the holding of the TTAB here is not new and you should be aware of the fact that synonyms can be confusing. As noted in Gastown Inc., of Delaware v. Gas City, Ltd., 187 USPQ 760 (TTAB 1975) (GAS CITY (“GAS” disclaimed) held likely to be confused with GASTOWN, both for gasoline) and in the case cited in the present decision, Hancock v.
American Steel & Wire Co. Of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
held confusingly similar when used on wire fencing), synonyms need to be considered.

Finally, does anyone really think that the iVillage folks could not have successfully opposed iTOWNS at the TTAB? Mr. Doninger saved them an opposition and the TTAB should be lauded for supporting that without making them do it using dilution, fame of the mark, et. al.

At 3:28 PM, Anonymous Anonymous said...

"It takes a town." Not quite the same as "it takes a village" is it? Very questionable decision.


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