Monday, September 24, 2018

TTAB Test: Is “LUNACYCLE” for Electric Bicycles Confusable with “LUNA & Design” for Women’s Bicycle Clothing and Accessories?

[This guest post was written by Kira-Khanh McCarthy, a 2L at the University of Notre Dame School of Law]. The USPTO refused registration of the mark LUNACYCLE, in standard characters, for electric bicycles, finding the mark likely to cause confusion with the registered mark LUNA, in the design form shown below, for women’s bicycle clothing and accessories. On appeal, Applicant contended that its mark is different in both sound and appearance, the goods are “readily and immediately distinguishable on their face” and marketed in different trade channels, and there is strong evidence of third party usage. Do you think the Board was convinced by these arguments? In re Luna Cycles, Serial No. 87132160 (September 18, 2018) [not precedential] (Opinion by Judge Angela Lykos).

The Marks: Applicant argued that Examining Attorney Alicia Collins Edwards did not pay enough attention to the design and appearance of the registered mark, referring to the word’s stylization and crescent moon design. Perhaps even more notable, Applicant asserted that the Examining Attorney incorrectly dissected the mark by placing too much emphasis on “LUNA.” Instead, Applicant contended that its mark was “a portmanteau of the word ‘LUNACY’ and ‘CYCLE.’” The Board was not impressed:

Under Applicant’s logic then, consumers would be more likely to understand and pronounce Applicant’s mark as “lunacy cle.” While in theory this is possible, it is highly unlikely. Rather, considering the goods for which registration is sought, it is more likely that consumers will understand the mark to represent a “telescoped form” of the two separate words “LUNA CYCLE” focusing on the first arbitrary portion “luna” as the dominant feature and according less significance to the generic term “cycle.”

To further its point that consumers would read Applicant’s mark as two separate words, the Board relied on Applicant’s own specimen of the mark displaying the letters “L” and the first “C” in larger font (see photo below). Because the Board found LUNA to be the dominant portion of Applicant’s mark, it concluded that the involved marks project “virtually the same connotation and commercial impression” despite having slight differences in sound and appearance.

The Goods: Here, Applicant argued that the goods are “readily and immediately distinguishable on their face.” The Board, however, noted that this issue should focus not on “whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of [the] goods.” L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984).

The Examining Attorney submitted evidence that both brick-and-mortar and online retail stores specializing in bicycle products (including electric bicycles) also sell women’s bicycle apparel under the same trademark. What’s more, the record indicated that electric bicycles and women’s bicycle apparel are complementary products and that “consumers would be likely to encounter one product while purchasing another.” As a result, the Board found the goods to be related in nature.

Trade Channels: Applicant claimed that the registered mark covered “promotional clothing items offered in connection with nutrition bars” which did not overlap with its electric bicycles. However, the Board noted that neither side’s identification contained any restrictions on channels of trade. Instead, the involved goods are offered for sale online and in brick-and-mortar specialty bicycle shops, as reflected by the record. And so, the Board found that the goods are marketed in the same trade channels to the same consumers.

Third Party Registrations: Finally, Applicant asserted that “the LUNA portion in the cited mark  is relatively weak and entitled to a narrow scope of protection." While Applicant cited to over 100 registrations for LUNA-formative marks in class 25, the Board pointed to the lack of evidence of actual use of those marks, and it found that this was not enough evidence to prove that LUNA was so weak a mark that consumers are capable of making apt distinctions between LUNA marks. As a result, this factor was deemed neutral at best.

Conclusion: Balancing the relevant du Pont factors, the Board found for a likelihood of confusion and affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Compare this decision to the recent SQUEEZE JUICE COMPANY decision [TTABlogged here], where 12 third-party registrations sufficed to show that the term SQUEEZE is weak.

Text Copyright Kira-Khanh McCarthy and John L. Welch 2018.


At 9:01 AM, Anonymous Anonymous said...

Repost due to typos - had to go take my meds.

What planet does the TTAB live on???
The USPTO consistently grants Registrant's for "clothing" trademark rights way beyond what they are entitled to under the Lanham Act. Clothing is NOT RELATED to very single other type of consumer good. The USPTO should require an indication whether the clothing is for marketing/promotional purposes sold within the retail store, such as a nutrition store and a legitimate line of clothing sold in a "clothing store."
In addition, the USPTO is allowing way too many ornamentations uses of simple phrases "MY DAD'S THE BEST FARTER" merely because the Applicant makes a label or tag with that phrase. These phrases DO NOT function as trademarks. No consumer would say that phrase is a source indicator.
The USPTO is supposed to promote commerce, not hinder it because of irrational, non-real-world application of the likelihood of confusion test. NO CONSUMER WOULD EVER BE CONFUSED AS TO SOURCE between LUNA and LUNACYCLE. These types of cases should be left to the prior registrant to make a business decision about whether the published mark creates confusion. If that is not acceptable, then the USPTO should send a notification to the owner of the cited mark notifying them of their right to oppose. Expecting 1,000,000 or more active registrants to read the Official Gazette every week is slightly insane especially in this age of easy electronic communications.
Finally, Applicant should have raised the argument that LUNACYCLE is a play-on LUNARCYCLE - which is a great mark for a bicycle.

Rant over. Until the next TTAB decision that defies the reality that we all live in except the TTAB.

At 10:01 AM, Blogger John L. Welch said...

The cited registration wasn't for "clothing" per se, but for bicycle and athletic clothing. The evidence showed that such clothing is sold in bicycle shops. So maybe this is not the best case to make your point, which is a valid one: i.e., by using third party registratiosn, one can argue that "clothing" is related to virtually everything. Perhaps applicant should have sought to restrict the registration to clothing sold in connection with energy bars. But energy bars are sold in bicycle shops, aren't they?

At 1:40 PM, Blogger Susan Dierenfeldt-Troy, Esq. said...

One thing I impress upon clients is that "overlapping" goods and services can result in non-registration of their mark. By way of example, even if the registrant of a clothing mark does not have a separate registration for sunglasses, sunglasses represent a type of product that the registrants of many clothing marks do offer. So the applicant's similar mark for IC 009 (includes sunglasses) may well be rejected even if the owner of registered mark has only registered its mark for clothing (IC 025). I do not agree with the USPTO in this particular matter but I've also disagreed with them on matters where a mark has been approved. Seems like registration these days is not so readily predictive. Picking a product/service name with an eye towards both minimizing infringement problems and succeeding in registering the name with the USPTO is a lot more difficult than it appears.

At 10:47 AM, Blogger Unknown said...

The "sold in bike shops" nonsense is how Trek Bicycle gets away will bullying everyone. Bike shops sell many goods and services - this cannot be the be all/end all. Energy bars are not related to bikes. T-shirts promoting energy bars are not related to bikes. So much legal fiction analysis in clothing space, also.


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