Wednesday, July 12, 2017


Okay, this sounds rather straightforward doesn't it? The services are identical: retail furniture stores. Therefore a lesser degree of similarity between the marks is needed to support a finding of likely confusion. The marks FURNITUREBOBS and BOB'S DISCOUNT FURNITURE are not to be considered side-by-side, but rather as if encountered separately. Registrant disclaimed DISCOUNT FURNITURE, and the word FURNITURE in applicant's mark is surely descriptive. But what about third-party uses and registrations of BOB and FURNITURE? In re Horizon Merchant, Inc., Serial No. 86736229 (July l0, 2017) [not precedential] (Opinion by Judge Jyll Taylor).

Applicant maintained that the cited mark BOB'S DISCOUNT FURNITURE is very weak when considered in the light of third-party registrations and uses of marks in the furniture industry, which evidence shows that consumers are able to distinguish these businesses on the basis of small differences between the marks.

The Board found, however, that the 29 registrations cited by applicant, that contained variants of "Bob" (including Robert and Roberta), were of little probative value because the two marks at issue here are much closer to each other than the third-party registered marks. The three dozen third-party uses, however, were more interesting.

Of the third-party uses, eleven included both "Bob" or "Bob's" and "Furniture." Of those, six included additional terms that distinguished the marks and altered their commercial impressions: BOB’S FURNITURE & BEDDING, BOB’S FURNITURE REPAIR SERVICE, BOB’S FURNITURE & AUCTION, BOB MILLS FURNITURE, BOB’S FURNITURE HOSPITAL and BOB LOFTIS FURNITURE. [Five of them seem pretty relevant to me - ed.].

The remaining five uses - BOB’S FURNITURE, BOB’S NEW & USED FURNITURE, BOB’S FURNITURE OUTLET, BOB’S FURNITURE AND BOB’S FAMILY FURNITURE - "do not evidence such a widespread and significant use of the terms 'BOB'S' and "FURNITURE' in the furniture industry that we can conclude that the cited mark is so weak that the public would be able to distinguish the source of Applicant's services from those of Registrant by the slight differences in their respective marks."

The Board noted that in Jack Wolfskin there were at least 14 relevant third-party uses and registrations, and in Juice Generation there were 26.

The Board recognized that there is a "certain degree of weakness in the cited mark," but "even weak marks are entitled to protection against similar marks for identical goods and/or services."

And so the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: What do you think? Do you need at least 14 third-party uses and registrations to make an effective attack on the strength of the cited mark? Applicant here came close to meeting that standard, depending on which third-party uses and registrations that you count.

Text Copyright John L. Welch 2017.


At 9:25 AM, Anonymous Anonymous said...

I think the cited mark is weak as last week's dishwater and the Board once again relished exercising its power to say NO!

At 9:35 AM, Anonymous Anonymous said...

I can identify at least four different ways that this one doesn't sit well with me.

There are co-existing registrations for BOB'S DISCOUNT FURNITURE and BOB MILLS FURNITURE, but FURNITUREBOBS is apparently too close.

It's difficult to advise clients in these situations. You conduct a trademark search and report back to the client that you found something similar, but there's a 75% chance the examining attorney won't make the rejection. However, if they make the rejection then there's a 90% chance you'll lose.

At 2:24 PM, Blogger Pamela Chestek said...

Bob's Discount Furniture, my home boy! So sorry I don't get to listen to those ads anymore (not)!

At 1:44 PM, Blogger John L. Welch said...

Pam, that makes one of us.


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