Third-Party Uses Bring TTAB Reversal of ACCURATE ROOFING Section 2(d) Refusal
The Board reversed a refusal of the mark shown below, for "building construction services, namely, roofing," finding it not likely to cause confusion with the mark ACCURATE ROOFING, registered for construction services including roofing.The Board found the cited mark to be weak in view of the inherent weakness of the term ACCURATE and the evidence of significant third-party use of marks and names of roofing companies containing that word. In re R. Young Enterprises, Inc., Serial No. 86671271 (December 23, 2016) [not precedential].
Because the involved services are in-part identical, the Board must presume that they travel in the same trade channels to the same classes of consumers. The question, then, was the similarity of the marks.
Under the sixth du Pont factor, the strength of the cited mark, the Board considered the nature and number of similar marks in use for similar services. Dictionary definitions of the word "accurate" indicated that it has suggestive significance for roofing services in that it indicates a company's ability to perform services that are "correct and without any mistakes."
As to marketplace strength, applicant submitted evidence of third-party uses of "accurate" in connection with roofing services in the marks and names of companies in 16 states by at least 30 entities. This evidence was "powerful on its face," even though applicant did not provide specifics regarding the extent and impact of the usage. See Juice Generation, 115 USPQ2d at 1674.
The absence of any evidence of third-party registrations of ACCURATE-formative was not significant because of the third-party usage evidence. The examining attorney's distinction between third-party use as a trade name rather than as a service mark was not meaningful, since service marks and trade names serve the same source-identifying function.
The inherent weakness of the word “accurate” as a mark for roofing services and the significant third-party use of ACCURATE in the marks and names of roofing companies suggest that roofing marks containing the word ACCURATE are capable of co-existing without confusion where “the remaining portions of the mark may be sufficient to distinguish the marks as a whole from one another.” Promark v. GFA Brands. Inc., 114 USPQ2d 1232, 1244 (TTAB 2015).
The Board focused on the cited standard character mark. As to applicant's mark, it found that "Accurate Roofing" is the dominant portion, since they appear in the largest and boldest type, and at the top of the mark.
On the record here, we find that Applicant’s use of a design element, the slogan “Roofing made to last!”, and other words in addition to the words “Accurate Roofing” makes the mark, when considered in its entirety, sufficiently dissimilar from the cited mark ACCURATE to avoid a likelihood of confusion. [citing Juice Generation at 1675-75] This du Pont factor weighs against a finding of a likelihood of confusion.
Finally, considering the fourth du Pont factor, the conditions of sale, the Board recognized that it must consider "the least sophisticated consumer." [God help us! - ed.]. The Board concluded that the purchasers of roofing services, including homeowners, are not "uniformly sophisticated," but they nevertheless exercise a good deal of care when purchasing roofing services. Typically, there is a pre-job estimate, customized to a homeowner's specific needs, and a one-on-one relationship is established between provider and customer. The services are relatively expensive and are particularly important to most homeowners because they involve the customer's dwelling. Therefore, this du Pont factor weighed against a finding of likely confusion.
The Board concluded that confusion is not likely, and it reversed the Section 2(e) refusal.
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TTABlog comment: Note the importance of Juice Generation: third-party usage evidence is crucial in showing that a mark or a term is weak. Third-party registration may help, particularly when used like a "dictionary," but a collection of website uses will be much more powerful "on its face," even without proof of extent of use and consumer awareness.
PS: I think this opinion should be precedential.
Text Copyright John L. Welch 2016.
posted by John L. Welch @ 12/25/2016
7 comments
7 Comments:
If confusion is unlikely in this case, I have to question whether the marks are source-identifying. If you can find 15 different ACCURATE ROOFING options in the market, how do you know which source you are buying from?
I suppose it's a similar question to the one usually asked with these weakness arguments - What's the point? This time the applicant did a fantastic job mustering all the "accurate" evidence but has effectively established that the mark is wholly unenforceable. And wouldn't entering all the evidence of third party use lead to a knowing infringement should the applicant try to expand to any of the places identified in the response?
Isn't the design registration worth something?
I think this decision is questionable at best. The Registrant has a registration for ACCURATE in standard character format. This means that the Registrant could theoretically use its mark in a similar design format as the Applicant. Perhaps Registrant is already using its ACCURATE mark in such design format. Who knows?
In this case the Board says, in part, the mark is registerable because of the substantial evidence of third party use, not registrations...just use. But why is third party use stronger that registrations...how many cases have we seen where the applicant shows 10, 15 or 20 "registrations" including the dominant word but the Board says that they cannot consider the registrations and the application must stand on it own............I'm confused.
Good question Fred, since the website pages alone don't amount to much more than a registration: neither show extent of use or public familiarity with the marks.
This business of the Board ignoring third party registrations as evidence of third party use makes no sense. If we were talking about Community Trademark registrations where use is not required for a registration, I would agree with the Board.
But since use is required for a US registration, they should accept the US registrations as proving use, at least prima facie, subject to rebuttal evidence.
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