Friday, June 13, 2014

Test Your TTAB Judge-Ability: Are READR and READER Confusable for Software for Reading Digital Magazines?

PixelMags sought to register the mark READR for "computer application software for mobile phones, portable media players and portable computers, namely, software for viewing digital magazines," but the PTO deemed the mark likely to cause confusion with the registered mark READER for "computer software for page recognition and rendering for use in viewing, printing, navigating, editing, annotating and indexing electronic documents, ... computer software for the encryption and access control of electronic documents." Applicant argued that the goods differ in purpose and that consumers will distinguish between them, and further that the words "read" and "reader" are used so frequently for software that consumers will recognize even small difference between marks. How do you think this came out? In re PixelMags, Inc., Serial No. 85379299 (June 12, 2014) [not precedential].

Applicant argued that its software is used for viewing magazines, whereas registrant's software enables users to read and print pdf files. Examining Attorney Dannean J. Hetzel maintained that the term "electronic documents" in the cited registration is broad enough to encompass "digital magazines." The Board agreed with the examining attorney.

As to the marks, applicant urged that READR is and "unfamiliar, coined term," whereas READER is a well-known word. The Board, not surprisingly, saw READR as a misspelling of READER. The marks are similar in appearance and, as applicant conceded, identical in sound. Both marks convey the idea that the software functions as a reader. "Given these similarities, the marks engender substantially similar overall commercial impressions."

Applicant submitted more than 60 third-party registrations for marks containing the words READ or READER, but they were of little probative value. There was no evidence of the nature or extent of use of those marks, nor do their existence on the register justify the registration of another mark that is likely to cause confusion. Moreover, none of the third-party registrations is as close to the cited mark as is applicant's mark.

The third-party registrations do show, however, that "the commonly registered term “reader” has a suggestive or descriptive significance for computer software such that differences between two marks may be sufficient to render the marks as a whole distinguishable." Here, however, the two marks are "extremely close," and even weak marks are entitle to protection against a similar mark for closely-related goods.

Resolving any doubt in favor of the prior registrant, the Board found confusion likely, and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  The cited registration, owned by Adobe Systems, issued in 2002. Do you think READER is generic for magazine-reading apps? Would Section 18 be of any use to applicant?

Text Copyright John L. Welch 2014.


At 9:18 AM, Anonymous Anonymous said...

When will the USPTO open their minds to reality and actually consider intelligent arguments about how consumers just might not be confused (especially with marks like these!). Sense some frustration? The more insightful an argument I come up with, the more pessimistic I have to be with the client who is just wasting money to have me use my brain. It's to a point that they might as well replace EAs and TTAB judges with computers.

At 12:39 PM, Anonymous Anonymous said...

I doubt Sec. 18 would help the applicant because while I think a good case can be made for the mark now being generic, that would mean that applicant's mark should be equally generic. A registration for either mark probably is not worth the paper it is written on, let alone procuring or defending any registration for it. But the Sec. 18 would probably bolster the applicant's claim to be able to use the "mark" without liability for infringement.


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