Wednesday, August 22, 2018

Precedential No. 27: TTAB Affirms 2(d) Refusal of #WILLPOWER - Hashtag Has No Trademark Significance

The Board affirmed a Section 2(d) refusal of #WILLPOWER for various items of clothing, in view of the registered mark shown below, for overlapping clothing items [WEAR disclaimed]. Applicant's argument that consumers would recognize that its mark refers to musical performer, and that its goods are purchased by his fans, fell on deaf ears. In re, llc, 127 USPQ2d 1627 (TTAB 2018) [precedential] (Opinion by Judge Karen Kuhlke).

The Goods: Because the goods are identical in part, the Board must presume that these goods travel in the same channels of trade to the same classes of consumers. Applicant pointed out that its “founder is Will Adams, who is known globally under his stage name WILL.I.AM as the front man for the Grammy Award winning and platinum winning musical group The Black Eyed Peas." It argued that its goods "are targeted to, and purchased by, wholly different consumers, namely, consumers seeking merchandise in connection with Applicant’s album and with Applicant." The Board pointed out, however, that the "respective actual uses and marketing are not reflected in the identification of goods in the application or the cited registration."

While the Applicant may be associated with William Adams, there is nothing in the application that limits the marketing of the goods to methods that would unmistakably associate the goods with him, his persona, or his album. 

Moreover, in In re, llc, 123 USPQ2d 1744 (Fed. Cir. 2017), aff’g 116 USPQ2d 1406 (TTAB 2015) [TTABlogged here], the Board considered the same applicant's express limitation to goods “associated with William Adams, professionally known as ‘,’” ruling that because the cited registrations contained no restriction as to trade channels or consumers, applicant's " restriction does not distinguish the mark sufficiently from the registrants’ marks to overcome the evidence of likelihood of confusion."

The Marks: The Board pointed out once again that when the goods are identical, a lesser degree of similarity between the marks is necessary to establish a likelihood of confusion. As to applicant's mark, the word WILLPOWER is the dominant portion. As to the cited mark, the Board observed that “the verbal portion of a word and design mark [that] likely will be the dominant portion.” Here, the word WILLPOWER dominates the cited mark.

The design of stylized mountains in Registrant’s mark does not overwhelm, detract from, or change the commercial impression of, the wording WILLPOWER WEAR and HAVE THE WILL, but rather serves as an upper border that attracts the eye to the wording WILLPOWER WEAR. The mountains also resemble stylized W’s, focusing attention on the alliterative wording WILLPOWER WEAR, immediately beneath them, as the source identifier.

Moreover, the slogan HAVE THE WILL merely "reinforces" the word WILLPOWER. WILLPOWER WEAR “comes across as a single, unified component of the mark” and HAVE THE WILL “as a separate part of the mark.”

Applicant argued that the marks are "dramatically and substantially different in appearance," but the Board did not see it that way: "the focus of Registrant’s mark is on the word WILLPOWER, which would be retained by the consumer more than the other elements."

Applicant further contended that #WILLPOWER has a different connotation that the word "WILLPOWER" in the cited registration because in the applied-for mark the word "WILL" is "meant to play on" the first portion of's stage name. The Board pointed out, however, that it must consider the perception of applicant's mark by consumers who are not familiar with, and who would take from applicant's mark the ordinary word "willpower."

As to the significance of the hashtag in applicant's mark, Examining Attorney Brendan McCauley pointed to TMEP § 1202.18 which discusses the impact of the addition of a # character to a word. the Board agreed with the Manual that "a hash symbol or the word HASHTAG generally adds little or no source-indicating distinctiveness to a mark."

We find, in this case, the hash symbol does not have source-indicating distinctiveness and at most simply appears as the social media tool to create a metadata tag.

In sum, the Board found the dominant element in the involved marks to be the word WILLPOWER, and it concluded that the similarities in the marks outweigh the dissimilarities.

Strength of the Cited Mark: Applicant maintained that the word “willpower” is weak in the field of clothing, pointing to five examples of third-party use of the term “willpower” as part of a mark. The Board, however, found the evidence insufficient to “show that customers … have been educated to distinguish between different … marks on the basis of minute distinctions.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).

The third-party evidence here is far less in quantity and quality than that in Juice Generation, which included at least 26 uses or registrations of the same phrase for restaurant services, Juice Generation, 115 USPQ2d at 1673 n.1, or in Jack Wolfskin where there were at least fourteen, 116 USPQ2d at 1136 n.2.

Conclusion: The Board found confusion likely, and so it affirmed the Section 2(d) refusal

Read comments and post your comment here.

TTABlog comment: Do you think the marks are confusingly similar?

Text Copyright John L. Welch 2018.


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