Tuesday, January 31, 2012

Test Your TTAB Judge-Ability on this Section 2(d) Design Mark Refusal

Applicant applied to register the design mark shown below left, for various pharmaceutical preparations and pharmaceutical research services, but the PTO refused registration under Section 2(d), finding the mark likely to cause confusion with the mark shown below right, for various pharmaceuticals. How would you rule on the appeal? In re Alvogen IP Co. S.a.r.l., Serial No. 77939659 (January 20, 2012) [not precedential].

The Board found that Applicant's goods and the goods of the cited registration are identical in part. As to the remaining goods and the services, the Examining Attorney submitted a number of third-party registrations showing that these goods and services may emanate from a single source under a single mark. Applicant did not contest this issue.

As to the marks, the Board noted once again that a side-by-side comparison is not the proper approach to the issue of similarity. [How about one atop the other? -ed.]. And because the goods are in part identical, the degree of similarity between the marks necessary to support a finding of likely confusion is diminished as to the parties' goods.

Applicant maintained that its mark would be perceived as the letter "A" due to "the gap in the right side, [and] the thickening and thinning of the line which evokes the stroke of a writing implement" whereas Registrant's mark will "overwhelmingly be perceived as a design rather than a letter."

The Board was not convinced: "Applicant's mark is so highly stylized that it cannot be presumed that it would be perceived as the letter 'A;' it would take some study to discern a lower-case letter 'A' in applicant's mark."

At best, applicant's mark is in the grey area between a pure design mark which cannot be vocalized and a mark which would readily be identified as a letter.

Applicant did not introduce any evidence as to its promotion of the mark or on consumer perceptions of the mark. Thus the Board had to decide the case based solely on the visual similarity of the marks. It considered applicant's mark "as a pure design rather than simply a stylized display of a letter mark." [What happened to the grey area? - ed.]

The Board concluded that, on balance, the marks are more similar than dissimilar. "This, of course, is a subjective determination, and hence we need not comment on the specific similarities and differences between the marks asserted in the briefs."

Finally, the Board observed that when pharmaceuticals are involved, and thus confusion as to source may have serious consequences, it is "extremely important to avoid that which will cause confusion."

And so the Board affirmed the refusal.

TTABlog comment: How did you do? Look, this is a subjective test, so you can't be wrong. Just disqualified for a judgeship.

Text Copyright John L. Welch 2012.


At 11:36 AM, Anonymous Anonymous said...

Since when is there a "serious consequence" factor in a likelihood of confusion analysis?



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