Wednesday, February 22, 2017

TTAB Test: Is PLUM Confusable With BLACKPLUM and/or PLUMDOG for Financial Services?

The USPTO refused registration of the mark PLUM for various advisory and consulting services, including mortgage brokerage, finding the mark likely to cause confusion with the registered marks BLACKPLUM for financial advice and consultancy services, and PLUMDOG for mortgage brokerage. Applicant's services overlap with those of the cited registrations, but what about the marks? How do you think this appeal came out? In re Plum, Inc., Serial No. 86572736 (February 16, 2017) [not precedential].

Of course, the Board presumed that the overlapping services are rendered in the same channels of trade to the same classes of consumers. And although the involved services encompass sophisticated investors, the Section 2(d) determination must be based upon "the least sophisticated potential purchasers." See Stone Lion Capital Partners, 110 USPQ2d at 1163.

As to the cited mark BLACKPLUM, the evidence established that a "black plum" is the common name of a species of plum found in the United States. "Thus, the shared meaning of PLUM and BLACKPLUM engenders a very similar commercial impression." In contrast, the word PLUMDOG has "a very different connotation and commercial impression."

Unlike with BLACKPLUM, the record includes no evidence that PLUMDOG has a particular meaning. Consumers most likely would view the “plum” portion of this mark as a modifier of "dog,' such that, considered in its entirety, the PLUMDOG mark creates a commercial impression of a kind of dog. We find that this differs significantly from the impression created by PLUM alone, even for the same services. *** Overall, we find that PLUM and PLUMDOG differ, especially in connotation and commercial impression.

Applicant pointed to various third-party uses of "plum," but only four were in the relevant field. This limited evidence was insufficient to support applicant's argument that "the word ‘plum’ is not distinctive within the field of finance."

The Board therefore reversed the refusal based on the PLUMDOG registration, but affirmed the refusal in view of the  BLACKPLUM mark.

Read comments and post your comment here.

TTABlog comment: Did you pull out a plum? Or were you barking up the wrong tree?

Text Copyright John L. Welch 2017.


At 10:34 AM, Anonymous Anonymous said...

Apart from the design, which shows a dog, I would not have associated Plumdog with a species of dog. What come to mind for me was plum in the context of something superior or special (as in "a plum job"), and dog in the sense of a buddy or pal(ala Randy Jackson - 'Sup dogs?). First thing I thought of when I heard Plumdog was a lucky or special person.

At 11:25 AM, Anonymous Anonymous said...

Whoever said you can predict how a case will come out just by looking at the marks must have been smoking something.

At 12:47 AM, Anonymous Anonymous said...

It appeared that the Board put a lot of emphasis on the fact that the BLACKPLUM registration described their services very broadly, and did not limit the definition of the services as to their nature, type, channels of trade , or class of purchasers, which in turn created the presumption that the Board recognized as a mark that encompassed all services. It did not help PLUM that both it and BLACKPLUM dealt specifically with commercial real estate because that reduced a simple conclusion that the services are identical.
It would have benefited the Applicant if counsel provided some support, such as a survey or other direct or circumstantial evidence to prove the sophistication of the consumer. Without it, the Board effortlessly dismissed Applicant’s claim of superior consumer sophistication when it came to choosing between these types of financial services and deferred to the “least sophisticated potential purchaser” precedent.
When it came to the marks and the analysis of their appearance, sound, connotation and commercial impression the analysis had to be based on the marks as depicted in the respective application and registration, without regard to whether the marks will appear with other marks, such as house marks, or other elements when used. See In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993). Additionally, because the services are identical or virtually identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012) Applicant’s proposed mark was PLUM in standard characters, and the marks in the cited registrations were BLACKPLUM and PLUMDOG, also in standard characters. By Applicants own omission, they described the common definition of plum as having “a dark reddish-purple color” which when showed in conjunction to the design of the fruit, is almost indistinguishable from the very common plum, Prunus salicina , which are the most likely species of plum to be found year-round in supermarkets and can very easily be referred to as a black plum. I believe due to the lack of evidence provided by Applicant in terms of showing third-party use and failing to prove a more sophisticated consumer base, the TTAB was correct in this appeal and weighed the confusion factors appropriately.


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