Wednesday, May 10, 2017

TTAB Test: Are These Two "EIS & Design" Marks Confusable for Engineering Services?

The USPTO refused registration of the mark shown below left, for "engineering," deeming it likely to cause confusion with the registered mark shown below right for "design for others in the field of engineering, engineering, industrial design ...." The services are in part identical, but what about the marks? How do you think this came out? In re Engineering & Inspection Svcs., LLC, Serial No. 86644478 (May 4, 2017) [not precedential] (Opinion by Judge Adlin).

The Board found the marks to be more similar than dissimilar because the literal and dominant portions of the marks are identical. When marks are comprised of words and a design, the words are usually accorded greater weight. The gears in applicant's mark suggest and reinforce the identified engineering services. [Really? - ed.] "Those interested in Applicant's engineering services would rely on the initials EIS which more clearly identify a source of services than either the nondistinct rectangle or the gear design."

In registrant's mark the initials EIS are highllighted by the accompanying design "becuase the initials effectively 'pierce' the stars design such that the design's left side no longer looks like the side of a standard star, but instead is used to draw attention to the initials, through the lines of the star appearing above the initials." In addition, the letters are effectively "bolded." The words at the bottom of the mark are not bolded and "merely highlight that the source is EIS, which is in turn a Vincit Group member, drawing more attention to the initials than the star design." And star designs are fairly common and thus less distinctive than the accompanying words.

The marks also sound quite similar and convey the same meaning, to the extent consumers perceive a meaning in EIS. "Indeed, consumers familiar with Registrant's mark may, upon encountering Applicant's mark, believe that Applicant is the same EIS which is a member of the Vincit Group."

Applicant's argument that consumers of the involved services are sophisticated and will exercise heightened care was unsupported by evidence. In any case, this factor is "easily outweighed" by the legally identical or closely related services, overlapping trade channels, and similar marks.

And so the Board affirmed the Section 2(d) refusal.

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Text Copyright John L. Welch 2017.


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