Thursday, July 25, 2019

SMART WIFI Confusable With WI-FI Certification Mark, Says TTAB

The Board affirmed a Section 2(d) refusal of the mark SMART WIFI for "computer application software for mobile phones, computers, laptops, tablets, namely, software for storing and processing information," finding the mark likely to cause confusion with the registered certification mark WI-FI (in standard character form) for "computer hardware and peripherals, namely, wireless local area networking products," owned by WI-FI Alliance of Austin, Texas. The certification statement in the registration reads: "[t]he certification mark, as intended to be used, will certify that goods manufactured by authorized persons comply with interoperability standards." In re GoZone WiFi LLC, Serial No. 86624361 (July 23, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

Section 4 of the Lanham Act states that certification marks "shall be registrable . . . in the same manner and with the same effect as are trademarks." Case law establishes 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 Section 2(d) test is the same: the du Pont analysis.

Applicant GoZone maintained that the term WI-FI is weak because there are "dozens of existing registrations and applications that utilize the term WIFI." The Board took judicial notice of dictionary definitions that referred to Wi-Fi or WiFi as a "trademarked term." [What? trademark is not a verb! - ed.].

GoZone submitted various webpages showing third-party use of the term WiFi or Wi-Fi in connection with computer-related services, but there was no indication whether registrant certified those uses of its certification mark. GoZone also submitted nine third-party registrations for marks that include the term and that either disclaim the term or are registered on the Supplemental Register.

To the extent that GoZone argued that WIFI is merely descriptive and unprotectable, that claim is inapposite since the mark is registered on the Principal Register without a claim of acquired distinctiveness. The WI-FI mark is entitled to a presumption of validity which cannot be challenged in an ex parte context.

The Board found that there is some degree of conceptual weakness in the certification mark, but even weak marks are entitled to protection against a substantially similar mark for similar goods, as here.

As to the marks, the Board found them similar in sight and sound. The hyphen in the cited mark has no significance in this context. The term SMART is merely suggestive or laudatory, as applicant admitted in its brief. SMART WIFI for computer related goods is likely to be perceived as a variant of registrant's mark and used with registrant's certification and permission.

As to the goods, GoZone argued that they are not related because it provides software, where registrant's certified goods are computer hardware. Nonetheless, the Board observed, GoZone's broadly identified software for "storing data and processing information" is likely to be used with the "wireless local area networking products" of registrant's certified users. In fact, GoZone's specimens refer to use of its products with "WiFi." Moreover, Examining Attorney Dezmona J. Mizelle-Howard submitted third-party registrations that include software for storing or processing information and computer hardware and peripherals. Thus these goods are of a type that may emanate from a single source. The Board concluded that the involved goods "are similar and are likely to be complementary."

There are no limitations as to trade channels of classes of customers in either the application or cited registration, and it must be assumed that GoZone's products and the goods of registrant's certified users travel through all normal channels of trade and are marketed to typical consumers, including "overlapping members of the general public that seek various types of computer-related products."

Conclusion: The Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Two certification mark cases in one week. Unbelievable!
BTW: here is a 2008 article on certification marks by Michelle B. Smit, entitled "(Un)Common Law Protection of Certification Marks," 93 Notre Dame L. Rev. 419 (2017).

Text Copyright John L. Welch 2019.


At 8:47 AM, Anonymous Anonymous said...

Fact check: trademark is a verb.

At 8:56 AM, Blogger John L. Welch said...

Maybe to the great unwashed, but trademark attorneys should know better. If you first use a mark in commerce and thus create trademark rights, have you "trademarked" it?


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