Thursday, August 08, 2013

EDGECRAFT Proves Actual Confusion, TTAB Cancels EDGEWARE Registrations for Sharpeners

The Board granted petitions for cancellation of three registrations for the mark EDGEWARE for electric knife sharpeners; electric scissor sharpeners; power operated sharpeners; hand tools, namely, knife sharpeners; hand-operated sharpening tools and instruments; knife sharpeners; sharpening rods; sharpening stones; whetstones; and hand operated kitchen tools, namely, graters, slicers, choppers and mandolins for cutting food, finding a likelihood of confusion with the registered mark EDGECRAFT for knife sharpeners and other household goods. The Board's opinion includes a lengthy discussion of actual confusion, the "centerpiece" of Petitioner's case. Edgecraft Corporation v. Smith’s Consumer Products, Inc., Cancellation Nos. 92052940, 92054092, and 92054104 (July 12, 2013) [not precedential].

The Board reviewed Petitioner's actual confusion evidence "with a critical eye, not only with respect to the problem of hearsay but also as to the witnesses competence to testify regarding the incidents and as to the degree of detail with which the incidents are described." Some of the purported incidents of confusion lacked sufficient detail to be probative. Other incidents did not demonstrate actual confusion, "but rather perspicacious awareness that respondent and petitioner's brand are different." And others were mere "slips of the tongue" by persons fully aware of the difference between the brands.

However, several incidents were probative, to varying degrees, of actual confusion in the marketplace. One involved a store manager for a customer of both parties, who while setting up an in-store demonstration of Petitioner's products, mistakenly displayed Respondent's products. In a second incident, a UK distributor attending a trade show in Chicago was confused in believing that Petitioner had two booths at the show, when one was the EDGECRAFT booth and the other the EDGEWARE booth. In a third, an on-line retailer mistakenly displayed one company's products under the other's mark.

The Board found that the factor of actual confusion weighed in favor of Petitioner.

With regard to the other duPont factors, the Board found the involved goods to be identical or related. As to the identical goods, the Board presumed that they travel through the same channels of trade to the same classes of customers. The parties, in "intense direct competition," stipulated that they share some of the same trade channels and advertise in some of the same media. This factor favored Petitioner.

As to customer sophistication, the involved goods were sold to a wide range of customer types and in various marketing environments. The Board found this factor to be neutral.

As to the strength of Petitioner's mark, the evidence of marketplace strength weighed in favor of Petitioner. Third-party registrations demonstrated that "there is a weakness in the source-indicating power inherent in the designation EDGE in the field of sharpeners." The Board also noted that EDGE is "highly suggestive in the context of sharpening instruments, inasmuch as it describes an ultimate purpose of the goods, i.e., to improve the cutting edge of a knife or other cutting tool." The number of similar marks in the marketplace weighed against a finding of likely confusion.

As to the marks, the Board noted that the initial element of a mark may be more strongly impressed upon the minds of consumers than the remainder of the mark. Here, "craft" and "ware" are words of relatively low distinctiveness, and neither substantially changes the suggestive meaning of EDGE. The Board concluded that the marks are more similar than dissimilar in appearance, sound, meaning, and commercial impression.

Balancing the relevant duPont, the Board found confusion likely, and it granted the petitions for cancellation.

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Text Copyright John L. Welch 2013.


At 5:50 AM, Blogger Jonathan Hudis said...

With this opinion so heavily relying upon proof if actual confusion (which is rare), it should have been published as precedential.


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