Thursday, October 17, 2019

Divided TTAB Panel Reverses Section 2(d) Refusal of MINIBAR SMARTSNAX for Minibar Snack Food

A divided Board panel reversed a Section 2(d) refusal of MINIBAR SMARTSNAX for packaged snack food "for distribution through refrigerators and food storage cabinets having sensors to detect presence and removal of packages." The panel majority found no likelihood of confusion with the marks SMART SNACKS for candy and THE SMART SNACK for processed nuts. The judges disagreed as to whether the involved goods travel in different channels of trade and whether purchasers of applicant's good will exercise more than ordinary care. In re Minibar North America, Inc., Serial No. 87130884 (October 15, 2019) [not precedential] (Opinion by Judge Jyll Taylor).

The Board found the marks to be more similar than dissimilar. Applicant's third-party website and registration evidence was inadequate to show that the cited marks are weak. However, THE SMART SNACK for processed nuts has some inherent weakness in that "it connotes a beneficial snack." As for the goods, the Board found them to legally identical insofar as candy and nuts are concerned.

Turning to the channels of trade, because there are no restrictions in the cited registrations, the panel majority recognized that the Board must presume that they travel "through all usual channels of trade to all normal potential purchasers." (emphasis in original). However, the panel majority found that the "established, likely-to-continue channels of trade are distinct." Applicant's goods are limited to sale to hotels, motels, and temporary stay facilities through sensor-enabled units. These channels are "outside of the usual ones" for registrant's goods, and the examining attorney did not provide any evidence to establish the relatedness of the trade channels.

Moreover, the panel majority agreed with applicant that "professional temporary lodging purchasers" of applicant's goods will exercise more than ordinary care in their purchasing decisions. Applicant's goods will likely be purchased in larger quantities and must be appropriately packaged.

The panel majority concluded that the similarity between the marks and the identity of the goods were outweighed by the distinct trade channels and the purchaser care vis-a-vis applicant's goods, and so it reversed the refusal.

Judge Christopher Larkin, in dissent, contended that the panel majority had misapplied the third du Pont factor (trade channels), leading to an incorrect finding under the fourth factor (sophistication of purchasers).

Judge Larkin maintained that the unrestricted identifications of goods in the cited registrations, when properly construed, encompass the specific trade channels set forth in the subject application. It was improper for the majority to read into the registrations any limitations on channels of trade. The Board "may not assume, as the majority does, that only Applicant, and never Registrants, would sell candy and nuts to "hotels, motels, and temporary stay facilities" for  distribution through minibars. Thus the channels of trade for the involved goods overlap, and presumably so do the classes of consumers.

As to purchaser sophistication, Judge Larkin opined, because the channels of trade and classes of customers overlap, the Board must assume that these overlapping purchasers exercise the same degree of care. He would deem this fourth factor to be neutral.

Read comments and post your comment here.

TTABlog comment:  What do you think?

Text Copyright John L. Welch 2019.


At 8:02 AM, Blogger Eddie said...

The Board found the marks to be more similar than dissimilar.
More similar than dissimilar? they are phonetically identical.

Whatever happened to a 2e refusal? For all of the marks. Smart snacks, tasty snacks, healthy snacks, fun snacks, movie snacks, fruit snacks--do we really want to go down this road? It's common content with a descriptor in front of it.

At 9:57 AM, Anonymous Anonymous said...

Am I missing something here? In light of recent "generic" decisions, I am fairly surprised that it wasn't rejected as being generic. And I am actually shocked that it wasn't at least rejected as being merely descriptive.

Isn't there precedent that "smart" is a laudatory term?

Isn't this a 2(e)(1) slam dunk for the USPTO??? Sure there is a 2(d) issue to address, but what about the elephant in the room?

At 12:49 PM, Anonymous Anonymous said...

So if the identifications in the application/registration have no restrictions, is there ever a reason for the parties in a TTAB proceeding to submit evidence about trade channels and potential purchasers?

At 1:52 PM, Anonymous Anonymous said...

This is a fantastic decision that we need more of. The dissent's argument comes from the rote, mechanical application of USPTO doctrine that's obsolete and should be legislated away to avoid any doubt.

In short, consumers aren't idiots, and the modern marketplace is replete with nuances and brand awareness that can safely be acknowledged based regardless of the concept of an "unrestricted" ID of goods.

At 3:37 PM, Anonymous Anonymous said...

The dissent is correct on the channels of trade issue, the majority is flat out wrong.

The majority allows an Applicant to define the channels of trade by adding a whole bunch of detailed limiting language, when the cited marks clearly cover much broader channels that include the Applicant's channels.

How are "snacks in hotels" outside the registrant's "usual" channels? I always see snacks in hotels.

How does a person in a hotel exercise more than ordinary care in their purchasing decisions? They have only one choice, the one in front of them! There is no "care" at all!

How does the Board conclude Applicant's goods "will likely be purchased in larger quantities and must be appropriately packaged." Do they just make this up to reach the result they want.

VERY lame decision.

Another reason why people go to USDC if they have a choice.


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