Tuesday, August 13, 2013

Test Your TTAB Judge-Ability: Are EWETOPIA and UTOPIA Confusable for Yarn?

Examining Attorney Robert J. Struck refused registration of the mark EWETOPIA for "knitting yarns," finding it likely to cause confusion with the registered mark UTOPIA for "handknitting yarn." Applicant argued that the existence of several “topia” marks in this field narrow the scope of protection to be accorded the registered mark. How do you think this came out? In re T& C Imports, Serial No. 85570200 (July 25, 2013) [not precedential].

The goods are legally identical because applicant's "knitting yarns" encompass the goods of the cited registration. Since there are no limitations in the identification of goods, the Board must presume that they travel through the same, normal, channels of trade to the same classes of consumers. Although consumers may exercise some care in choosing yarn, even sophisticated consumers are not immune to source confusion.

As to the marks, the Board observed once again that when the involved goods are legally identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Here, the marks are phonetically equivalent and, despite the double entendre in applicant's mark, "one of the perceived meanings, utopia, remains identical to registrant's mark." The Board concluded that the similarities between the marks outweigh their differences.

As to third-party "topia" marks, applicant relied on six registrations, but only one was for goods related to yarn. Moreover, there was no proof of the extent of use of these six marks, and no evidence that consumers were accustomed to seeing them. Therefore, the evidence was insufficient to prove the cited mark to be weak; but in any event, even weak marks are entitled to protection when the goods are identical and the marks at issue are similar.

Applicant pointed to the lack incidents of actual confusion, but the Board noted that such an assertion carries little weight in an ex parte context, where the registrant has no opportunity to provide evidence.

Finally, applicant maintained that the cited mark had been abandoned, but the Board refused to hear this impermissible collateral attack on the cited registration. 

And so the Board affirmed the refusal.

Read comments and post your comments here.

TTABlog note: Well, how did you do? Don't be sheepish! Would you have appealed?

Text Copyright John L. Welch 2013.


At 8:12 AM, Anonymous Anonymous said...

I don't see how this is much different than the C-PREME case, where the Board ruled differently: http://thettablog.blogspot.com/2013/07/test-your-ttab-judge-ability-are-cpreme.html

In each case, the mark refused registration by the Examiner was a phonetically equivalent variation, or "play", on the already-registered dictionary word for identical goods.

At 10:41 AM, Anonymous Anonymous said...

This is a close call. If the goods had been more sophsticated it might have gone the other way. I think anyone that sees the marks would not be confused, and I think that's the most likely way the marks would be perceived. Given the benefit afforded the prior registrant I can't say that the decision is wrong.


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