Wednesday, July 23, 2014

Test Your TTAB Judge-Ability on This 2(d) Refusal of DASH DOG WASH & Design

The PTO refused registration of the mark DASH DOG WASH and Design, shown first below, for various pet-related services, including dog washing and grooming [DOGWASH disclaimed], deeming the mark likely to cause confusion with the registered mark SPLASH AND DASH FOR DOGS & Design, second below, for dog grooming services [FOR DOGS disclaimed]. Applicant appealed from the refusal, claiming that the marks are too different. Was it barking up the wrong tree? In re The Franchise Group Pty Ltd., Serial No. 79122789 (July 2, 2014) [not precedential].

The Board found the involved services to be, in part, legally identical, and it therefore presumed that the those services are offered in the same channels of trade to the same classes of consumers.

The Examining Attorney maintained that the marks are similar because they each contain the word 'DASH' along with a 'dog' formative term, and further because each includes a water drop design. Applicant argued that the marks contain different words and different designs, thereby creating different commercial impressions. Moreover, according to applicant, "the matter common to the two marks is weak, and should be accorded a narrow scope of protection." The Board noted that the word "dog" is generic for the involved services and the word "dash" suggests that the dog grooming services are provided quickly. [To me, "dash" suggests "daschund" - ed.].

Applicant pointed to third-party website evidence showing use of the word "dash" in several trademarks for dog grooming services: K-9 SPLASH & DASH, DOGGY DASH, DOGGIE BATH & DASH, BATH & DASH, and BATH N DOGGIE DASH LLC. The Board found this to be persuasive evidence, under the 6th du Pont factor, that "dash" is a weak term in the dog-washing field. And so the Board concluded that the scope of protection to be accorded the common portion of the marks is narrow.

Looking at the marks in their entireties, the Board found the design portions to be very different overall. Moreover, the literal portions - which are the portions of the marks most likely to be remembered - have very different commercial impressions: "the word DASH versus the phrase SPLASH AND DASH which consumers would not likely abbreviate to just the word DASH." Given the weakness of the word "dash," consumers may be expected to look to other portions of the marks to distinguish source.

The Board concluded that the differences in the marks create different commercial impressions sufficient to distinguish the marks, and this first du Pont factor was pivotal in the reversal of the refusal.


Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.


At 10:36 AM, Anonymous Anonymous said...

I think that this is a WYHR - Would You Have Refused?

No, I would not have issued a refusal in this case if I were the Examiner.

At 12:47 PM, Blogger TMAttorneyHeller said...

It was my opinion that the Board should reverse and I am glad they agreed with me!


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