Monday, October 15, 2018

TTAB Test: Is "I.W. SUISSE" Confusable with the SWISS Certification Mark, Both for Watches?

The USPTO refused registration of the mark I.W. SUISSE for "Clocks and watches; Parts for watches; Watch bands and straps; all of which are of Swiss origin as defined by the Swiss Ordinance governing the use of the appellation 'Switzerland' or 'Swiss' for watches, timepiece dial faces, and parts for timepieces made in Switzerland," finding the mark likely to cause confusion with the registered certification mark SWISS for “Horological and chronometric instruments, namely, watches, clocks and their component parts and fittings thereof” in Class A. According to the registration, "[t]he certification mark, as used by persons authorized by the certifier, certifies geographical origin of the goods in Switzerland." How do you think this came out? In re Pearl 9 Group LLC, Serial No. 86539117 (October 11, 2018) [not precedential] (Opinion by Judge Lorelei Ritchie).

The Board first pointed out that applications and procedures for certification marks "shall conform as nearly as practicable to those prescribed for the registration of trademarks." Section 1054 of the Trademark Act. The Board has observed that classification as a certification mark "has very little effect on our determination as to whether or not there is a likelihood of confusion."

The test for determining likelihood of confusion with respect to certification marks is the same as that applied to trademarks, i.e., the du Pont analysis. However, because the certification mark owner does not itself use the mark, the question of whether there is a likelihood of confusion is based on a comparison of the mark as applied to the goods or services of the certification mark users. (citations omitted). Other issues relating to the goods and services, including the channels of trade and purchasers therefor, are determined from the standpoint of the users as well. (quoting In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012)).

Because the identified goods are legally identical, the Board must presume that they travel in the same channels of trade to the same classes of consumers.

As to the marks, the Board noted the dictionary definitions of SUISSE (the French name for Switzerland) and SWISS (a native or inhabitant of Switzerland). "Thus, the term SUISSE is understood as referring to the country of Switzerland, from which SWISS things come." Applicant conceded that the terms are "no doubt related," but they are not identical, since SWISS refers to the people, whereas SUISSE refer to the region. The Board was not impressed, finding the terms to be highly similar in commercial impression: "clocks, watches, and their component parts that are Swiss, because they originate from Switzerland."

Observing that there is no correct pronunciation of a trademark that is not a recognized word, the Board found that SUISSE may be pronounced the same as SWISS.

Citing CAFC and Board precedent, Applicant argued that the first term in its mark is most likely to be remembered and noticed. It maintained that "I.W." stands for "International Watchman," the name of its company, and that International Watchman is a well-knows and very successful watch brand. The Board, however, pointed out that addition of a house mark does not necessarily avoid likelihood of confusion, and may enhance it.

Finally, applicant argued that the cited mark SWISS is weak because it is "merely descriptive." The Board pointed out, however, that Section 2(e)(2), which bars registration of marks that are primarily geographically descriptive, specifically exempts "indications of regional origin." Section 4 of the Trademark Act provides for registration of certification marks, "including indications of regional origin."

The Board concluded that consumers are likely to perceive I.W. SUISSE as a variant of the certification mark SWISS for the same goods, and so it affirmed the Section 2(d) refusal.

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TTABlog comment: The SWISS certification mark registration survived a challenge in 2012 on five grounds, including genericness, in Swiss Watch International, Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731 (TTAB 2012) [precedential]. [TTABlogged here].

Text Copyright John L. Welch 2018.


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