Tuesday, June 17, 2014

OPROSHIELD and SHIELD Confusingly Similar for Mouth Guards, Says TTAB

After dismissing Applicant OPRO's genericness counterclaim, the Board sustained this Section 2(d) opposition to registration of the mark OPROSHIELD for "gum shields for protecting the mouth from injury." The Board found applicant's mark likely to cause confusion with the registered mark SHIELD for "protective mouth guards for all contact sports." Shield Mfg., Inc. v. OPRO International Limited, Opposition No. 91190276 (June 10, 2014) [not precedential].

Genericness of SHIELD: In an exhaustive and exhausting discussion of the issue of genericness that took up about three-fourth of the decision, the Board concluded that applicant OPRO "failed to prove by a preponderance of the evidence that the relevant public understands that the word 'shield' primarily refers to mouth guards (i.e., that it is a generic term for mouth guards)."

Nothing in the record evidence - including dictionary definitions, opposer's website, applicant's website, third-party websites, applicant's patent, and applicant's own testimony - called a "mouth guard" a "shield."

According to the record, when "shield" is used in connection with protective devices, including mouth guards, the word "shield" is the suffix of a unitary term preceded by a specific body part (e.g., gum shield, arm shield, etc.). As applicant produced no evidence that the relevant public understands the term "shield" per se as it relates to mouth guards is a generic term, it failed to carry its burden.

The Board distinguished this case from Central Sprinkler, in which ATTIC was found to be generic for automatic fire sprinklers. There, the goods fell into both a broad category (automatic sprinklers) and a sub-class (sprinklers for attics). Here the question was whether the mark refers to the narrow category of goods (mouth guards) rather than the broad category of goods (protective devices). "We will not rely on evidence of unitary terms such as gum shield, arm shield, or knee shield and extrapolate that athletes and other relevant purchasers perceive the term "shield" per se to be generic for mouth guards."

And so the Board dismissed the counterclaim.

Likelihood of confusion: Opposer claimed that its mark is famous for Section 2(d) purposes, but its evidence fell short. The mark, however, enjoys "significant marketplace strength."

As we know, when the good are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. "In this case, we find that that SHIELD is likely to be perceived as a shortened version of OPROSHIELD when used on the same products." OPRO contended that the term "shield" is descriptive of mouth guards, and therefore that opposer’s SHIELD mark is entitled to only a narrow scope of protection. The Board, however, pointed to the marketplace strength of the SHIELD mark, concluding that SHIELD is entitled to a broad scope of protection.

The Board therefore sustained the opposition.

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TTABlog note:  What do you think?

Text Copyright John L. Welch 2014.


At 8:32 AM, Anonymous Anonymous said...

Interesting case...the mark went from the brink of genericness to being a very strong mark entitled to a broad scope of protection. Nice recovery.


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