Tuesday, October 13, 2015

TTAB Test: Is "MAC NET WIRELESS MONITORING" Confusable With "MAXNET" For Same Services?

The USPTO issued a Section 2(d) refusal of the mark show immediately below, for "wireless monitoring for fire alarm and security systems" [NET WIRELESS MONITORING disclaimed], finding it likely to cause confusion with the registered mark MAXNET for"central station alarm monitoring services." The services overlap and are therefore legally identical. But what about the marks? How do you think this came out? In re Mac Systems, Inc., Serial No. 86184962 (September 29, 2015) [not precedential].

There was no dispute that applicant and registrant offer alarm monitoring services, registrant's "central station alarm monitoring" services encompassing applicant's services. There are no restrictions on the channels of trade or classes of consumers for the involved services.

As to the marks, the panel majority found the differences in the marks to be "crucial." The majority rejected the examining attorney's contention that MAC NET is the dominant feature of applicant's mark. The antenna design "certainly is visually very prominent," and is integrated with the terms MAC and NET. The antenna may be understood as representing the letter "I" and applicant's mark may be read as MACINET. [Really? That never occurred to me or, apparently, to the applicant. - ed.]. The antenna is "such a significant element of the mark" that neither the words nor the antenna design dominates the mark in terms of overall impression.

The majority concluded that the marks are more dissimilar than similar. The marks are "quite different in appearance," and some consumers may perceive applicant's mark as MACINET. The disclaimed wording WIRELESS MONITORING is another difference. The marks sound "similar," but the additional wording and the possible interpretation of the antenna as the letter "I" contribute to some difference in sound.

And so the Board reversed the refusal to register.

Judge David Bucher dissented "vigorously." The majority acknowledged that when the involved services are legally identical, a lesser degree of similarity between the marks is required for a finding of likely confusion. However, it did not recognize that MAC NET and MAXNET are the portions of the marks that will be used by consumers when calling for or discussing the respective services. Slight differences in pronunciation, connotation, and commercial impression do not ordinarily justify a finding that confusion is not likely.

I find it most confounding that something as ubiquitous as a wireless icon would be seen as serving a source-identifying role for wireless monitoring services. Even more egregious is the reach by the majority, on its own initiative, to insert at multiple crucial points into the heart of its determination, the possibility that this icon could be perceived as the letter “i” – an argument happily never ventured by Applicant on its own behalf. [Emphasis in original].

Judge Bucher would "readily find herein a likelihood of confusion."

Read comments and post your comment here.

TTABlog comment: Well, how did you do?

Text Copyright John L. Welch 2015.


At 9:19 AM, Anonymous mam said...

I am surprised the majority did not put more emphasis on the differences in the connotation of the marks. MAC and MAX have entirely different meanings and, as a result, IMO the marks have very different commercial impressions.

At 1:10 PM, Anonymous Alex B said...

Why was NET in MAC NET and Design not considered unitary and therefore not necessary in the disclaimed portion of the mark?

At 3:04 PM, Anonymous Carole Barrett said...

Will be interesting to see if opposition is filed.


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