Tuesday, December 18, 2018

TTABlog Test: Is "T MARK" Confusable With "TJ MARC & Design" for Jewelry?

The USPTO refused to register T MARK, in standard character form, for jewelry, finding it likely to cause confusion with the registered mark shown below, also for "jewelry." Applicant Chai Tai Fook argued that "TJ" is a weak formative because it is a common nickname and it appears in six third-party registered marks. How do you think this came out? In re Chai Tai Fook Jewellery Company Limited, Serial No. 87374361 (December 13, 2018) [not precedential] (Opinion by Judge Thomas W. Wellington).

Since the goods are identical (in part), the Board must presume that they travel in the same normal channels of trade to the same classes of consumers. Although applicant argued that jewelry is purchased with care (because it is a "very personal" item and "can often be expensive"), neither the application or cited registration restricts the identified goods as to quality or price point. Therefore the Board must presume that the goods include inexpensive jewelry that may be purchased with ordinary care. Furthermore, the Board's determination must be made based on the least sophisticated purchaser.

Purported Weakness of "TJ": Applicant argued that "TJ" has the connotation of a nickname and, as demonstrated by third-party registration evidence, is a "somewhat weak mark." It pointed to a Wikipedia entry for "T.J. (given name)," a printout from "eBabyNames" for "TJ," and six third-party registrations for marks continaining "TJ." According to applicant, in light of the weakness of "TJ," those six marks are able to co-exist on the register for the same or highly related goods.

The Board disagreed. Only one of the six third-party registrations for marks containing "TJ" were for jewelry while the others involved apparel or other "facially unrelated goods." Moreover, third-party registration evidence of marketplace weakness "is unavailing because third-party registrations standing alone, are not evidence that the registered marks are in use on a commercial scale, let alone that consumers have become so accustomed to seeing them in the marketplace that they have learned to distinguish among them by minor differences."

There was no evidence that "TJ" or the letter "T" has any special meaning vis-a-vis jewelry. In sum, the Board found no commercial weakness in "TJ" or any other element in the marks.

Comparing the Marks: As we know, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likelihood of confusion. The Board found that the marks at issue are "more similar than not." They are "very close" in sound because consumers are likely to verbalize each mark by its initial letter or letters followed by the phonetic equivalents MARK or MARC.

Because the applied-for mark is in standard characters, applicant seeks protection for any font in which the mark my be displayed, including that employed by the registrant. The crown design in the registered mark is relatively insignificant, and consumers will focus on the literal portion of the mark in calling for the goods. And although "TJ" may be a common nickname, the Board did not find it "so different from the single initial 'T.'" [Tell that to Mr. T - ed.].

In sum, the Board found that the similarities in the marks outweighed their differences.

Finally, applicant pointed to the two registered marks shown immediately below (the one on the left being owned by registrant), both for jewelry. Applicant argued that the co-existence of these two marks on the register shows that the USPTO has previously found that the registration of MARK for jewelry can co-exist with the registration of MARC.

The Board, however, pointed out once again that in ex parte prosecution of a particular application, neither the examining attorney nor the Board is bound by the decision of other examining attorneys made in other applications. See In re Nett Designs Inc., 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).

Conclusion: Finding confusion likely, the Board affirmed the Section 2(d) refusal.

Mr. T with Nancy Reagan, Christmas 1983

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TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2018.


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