Friday, October 27, 2017

TTAB Test: Are Department Store Services Related to Computer Store Services?

The USPTO refused registration of the mark WHEN IT MATTERS for "retail department store services and online retail department store services," finding the mark likely to cause confusion with the identical mark registered for "retail store services featuring computer hardware, software, network and networking components, telecommunications products and services, cabling and wiring." Applicant argued that the marks have different meanings, since the "IT" in the cited mark refers to information technology, and that its own services actually will focus on tools and lawn/garden equipment. How do you think this came out? In re Stanley Black & Decker, Inc., Serial No. 86954703 (October 25, 2017) [not precedential]. (Opinion by Judge Albert Zervas).

The Marks: The Board was unmoved by applicant's argument regarding the meaning of "IT" in the cited mark: even if some consumers will ascribe the meaning "information technology" to the term IT in that mark, others will understand the marks at issue to have the same connotation and commercial impression because "when it matters" can be applied to both technical and non-technical goods and services. The registered mark is in standard character form, and so the word "IT" may be displayed in the same lower case letters as the rest of the mark, "thus removing 'it' from the 'information technology' meaning offered by Applicant."

The Services: A "department store" is defined as a "store having separate sections for a wide variety of goods." Internet evidence showed that department stores like Walmart, Sears, Target, and Kohls offer a wide variety of products, including electronic goods and video games. The Board found that retail and online department store services include the sale of computer hardware, software, networking components, and telecommunications products and services. It therefore concluded that applicant's and registrant's services overlap.

Applicant argument that its services will focus on tools and lawn/garden equipment was of no avail, since there are no such limitations in applicant's recitation of services.

Purchaser Sophistication: Applicant's recitation of services encompasses the sale of low cost items, and so the assertion that its customers would be sophisticated was unconvincing. Moreover, computer hardware such as computer cable plugs can be relatively inexpensive.

Balancing the relevantdu Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2017.


At 7:22 AM, Blogger Gene Bolmarcich, Esq. said...

UGH!! They screwed it up again. The Board was supposed to find that computer stores also operate department stores, not that they both sell the same goods. When will they get this right? To me it's the biggest mistake they make on a REGULAR basis...finding that goods/services are related to PARTS of other goods/services...go to the CAFC with this someone please

At 7:29 AM, Blogger Gene Bolmarcich, Esq. said...

This comment has been removed by the author.

At 8:58 AM, Anonymous Anonymous said...

Applicant stated in its appeal brief that “its services will focus entirely on the general promotion of tools, lawn and garden equipment.” If that’s true, why on earth didn’t Applicant limit its identification of services to reflect that, which would almost certainly have avoided the refusal? Very strange strategy.

At 10:04 AM, Anonymous Anonymous said...

So I guess all retailers should classify themselves as "department stores" in their trademark applications if they sell more than one kind of item. Then they can get trademark protection for EVERYTHING UNDER THE SUN.


Post a Comment

<< Home