Friday, December 13, 2013

PRIDER Confusable With PRIDE for Scooters, Says TTAB, Affirming 2(d) Refusal

Applicant Joseph Tsiyoni, appearing pro se, failed to overturn the USPTO's refusal to register his mark PRIDER for "Motor standing scooters, Motorized personal mobility scooters, personal mobility device namely standing motor scooters for multi purposes, for persons who can stand and drive." Examining Attorney Robin Mittler deemed the mark confusingly similar to the registered marks PRIDE, PRIDE MOBILITY PRODUCTS, and PRIDE - THE FIRST NAME IN SCOOTERS, for electrically powered scooter vehicles for use by elderly, infirm, or disabled persons. If this case did not involve a pro se applicant, it probably would be a "WYHA?," don't you think? In re Joseph Tsiyoni d/b/a Shairon Int’l Trade, Serial No. 85737891 (November 14, 2013) [not precedential].

Applicant Tsiyoni found the appellate route a bit bumpy. First, he attached to his appeal brief a number of exhibits, to which the Examining Attorney objected as untimely. The Board agreed, refusing to consider the exhibits and instead focusing only on material previously filed.

The Examining attorney raised a "conduct-based objection" to Tsiyoni's inclusion in his brief, a "cartoon figure seated in a wheelchair with his middle finger extended upwards and a partial verbal bubble containing symbols usually associated with expletives." The cartoon was labeled "wheelchair representing registrant." The Board agreed that applicant should not have included this "unseemly" graphic in his brief. It did not require applicant to submit a substitute brief, but reminded applicant that all parties must "conduct their business with decorum and courtesy."

The merits of the case were not that interesting. The involved goods are legally identical, since the "electrically powered scooter vehicles" of the registrations, for use by elderly, infirm, or disabled persons, encompass applicant's scooters. In other words, some elderly, disabled, and/or infirm individuals undoubtedly can stand and drive applicant's scooters.

Because the involved application and cited registrations have no limitations as to channels of trade, the Board must assume that the overlapping goods are offered in the same channels of trade to the same classes of consumers.

Turning to the marks,Tsiyoni's mark PRIDER is highly similar to the registered mark PRIDE in appearance and sound. Moreover, PRIDER is a telescoped term consisting of the recognizable words PRIDE and RIDER. Therefore, PRIDER and PRIDE have related connotations and create the same overall commercial impressions, namely, mobility products that individuals (riders) use with pride.

Tsiyoni pointed to the differences between standing and seated scooters, but the Board put the brakes on that argument by pointing to a particular product advertised on the Internet, which products transforms from a standing into a sitting scooter. In any event, the "motorized personal mobility scooters" of the application are not limited to "standing" scooters, and registrant's "electrically powered scooter vehicles" do not specify whether they are standing or sitting.

Next, Tsiyoni contended that registrant does not actually make "scooters" because its products have more than two wheels, and therefore "scooters" should not have been included in the identification of goods. The Board noted that the cited registrations enjoy a presumption of validity, and that applicant's argument constitutes an impermissible collateral attack on the registrations that may not be considered in an ex parte context.

Finally, Tsiyoni urged that purchasers of mobility devices are sophisticated and would exercise care in the purchasing decision. The Board observed once again that even sophisticated purchasers may be confused as to source when confronted by similar marks and legally identical goods.

Considering all the relevant duPont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note: Lesson here: avoid including in your brief, cartoons that disparage the other side.

Text Copyright John L. Welch 2013.


At 9:41 AM, Anonymous Anonymous said...

lol... reading thru this case, it is one of the funnier ones. thanks for posting this.

At 10:30 AM, Anonymous Anonymous said...

You should have mentioned the subsequent request for reconsideration of the Board's decision. The applicant was rather apologetic. And still unsuccessful.

At 10:32 AM, Anonymous Anonymous said...

"Lesson here: avoid including in your brief, cartoons that disparage the other side."

I already knew that but you can't remind people of this too often :)

At 10:51 AM, Anonymous Roberto Ledesma said...

WYHA? No. Pride and Prejudice.


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