Wednesday, November 21, 2012

Test Your TTAB Judge-Ability: Are CRAWLSAFE and SAFE CRAWL Confusable for Building Repair Services?

Applicant Cable Lock, Inc. applied to register the mark CRAWLSAFE for "repair or maintenance of home and building foundations," but the PTO refused registration under Section 2(d) in view of the Supplementally-Registered mark SAFE CRAWL for "waterproofing and encapsulation, namely, installation of protective barriers and sealing of the crawl spaces of residential buildings." Third-party websites and registration evidence provided by Examining Attorney Deborah Lobo, as well as Applicant's own use of the mark for waterproofing and encapsulation services, convinced the Board that the involved services are closely related and move through the same channels of trade to the same classes of consumers. But what about the marks? And what about the weakness of the registered mark? In re Cable Lock, Inc., Serial No. 8517466 (October 31, 2012) [not precedential].

Because it is registered on the Supplemental Register, the cited mark SAFE CRAWL "is entitled to a narrow scope of protection." Applicant submitted 23 registrations for marks containing the word "Crawl" and 324 registration for "Safe" marks, but that evidence had limited probative value. None of the marks were close to the marks involved here, and none include both words in the same mark. Moreover, the vast majority were for unrelated goods, and there was no evidence that the marks are in continued use. Although these third-party marks may be utilized, like a dictionary, to show that a portion of a mark is descriptive or suggestive, here "that fact has been established by registration on the Supplemental Register."

Turning to the marks, the most significant difference is the reversal of the words. However, given the fallibility of consumers in recalling trade designations, consumers may transpose the elements of the marks and as a result purchase the wrong product or service. When the two marks evoke the same or substantially the same commercial impressions, the Board has found the marks to be similar. That is the situation here: both marks suggest that the services provide a safe crawlspace.

In short, the word reversal is not enough to distinguish the marks when used on closely related services.

Finally, Applicant argued that consumers seeking its services are "sophisticated homeowners and commercial building owners, who exercise extra care when deciding whether to purchase such services." The Board, however, pointed out that the range of Applicant's customers is not limited but rather encompasses "all homeowners, including the ignorant, unthinking, and the credulous." Moreover, even if they were sophisticated, such purchasers are not immune to source confusion, especially when similar marks are used on closely related services.

Nevertheless, the Board acknowledged that the involved services are expensive and the purchase thereof is an unusual, one-time event. Some deliberation would be involved in the purchasing decision, so the degree-of-care factor favors Applicant.

Balancing the relevant duPont factors, the Board found confusion likely and it affirmed the refusal to register.

TTABlog comment: Okay, it's safe to crawl out of your shell and venture your opinion.

Text Copyright John L. Welch.


At 10:42 AM, Anonymous Anonymous said...

The Board neends to take more care in the words it selects. It often does not understand that its lack of attention to details is what causes the massive confusion in this area of law. For instance, the cited registration was found descriptive, as evidence by the supplemental registration. The Board recognized it as descriptive. Yet it callously will say, "Second, we find that both marks suggest that the services provide a safe
crawlspace." So in the same opinion, the cited mark is both descriptive and suggestive.


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