Test Your TTAB Judge-Ability On This Section 2(d) Refusal of ORGASMIC for Sex Education Books

Applicant Edward Kenneth Watson applied to register the mark ORGASMIC for "books in the field of sex education" but the PTO refused registration under Section 2(d), finding the mark likely to cause confusion with the registered mark ORGAZMIK for adult entertainment DVDs and other recordings, and for retail stores services in the field of adult entertainment. The marks are certainly close, but what about the goods and services? How do you think this came out? In re Watson, Serial No. 85775921 (June 3, 2014) [not precedential].

The Board found them to be phonetically equivalent and visually quite similar. ORGAZMIK would be seen as a misspelling of ORGASMIC, and therefore the two marks create the same commercial impression of extreme sexual pleasure. Thus the first duPont factor favored a finding of likely confusion.

Applicant Watson contended that ORGASMIC is a weak mark, pointing to 10 third-party registrations for marks that include the word ORGASMIC or ORGASM for goods/services similar or related to those at issue. Several of the registrations included a disclaimer of ORGASM. The Board agreed with Watson that the term ORGASMIC is highly suggestive of the involved goods and services. However, the two marks at issue here are more similar to each other than to any of the third-party marks. The Board concluded that the conceptual weakness of the marks limits the scope of protection to which the are entitled.

As to the relatedness of the goods/services, the Examining Attorney submitted a number of third-party registrations, but only one or two covered both sexual education books and recordings featuring adult entertainment. Applicant Watson submitted an affidavit attesting that there is no overlap in the involved goods and services, and no overlap in channels of trade. The Board concluded that the goods and services are unrelated and travel in different channels of trade.

As to customer sophistication, the prices of the involved goods and services would not suggest a high degree of purchaser care, but consumers may exercise some care vis-a-vis these personal goods. The Board deemed this factor to be neutral.

Balancing the relevant duPont factors, the Board found no likelihood of confusion, and so it reversed the refusal.

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Text Copyright John L. Welch 2014.