Tuesday, November 05, 2019

TTABlog Test: Are "PUBLIC GOODS" and "PUBLIX" Confusable for Personal Care Products?

The USPTO refused to register the mark PUBLIC GOODS for various personal products, including bar soap, toilet paper, and tooth brushes (GOODS disclaimed), on the ground of likelihood of confusion with the registered mark PUBLIX (in standard character and design form) for, inter alia, bar soap, dental floss, and toilet paper. On appeal, the Board found the goods to be identical or related. But what about the marks? The Board issued a split decision, with Judge Mermelstein dissenting. How do you think this came out? In re Don’t Run Out, Inc., Serial No. 87344127 (October 31, 2019) [not precedential] (Opinion by Judge Angela Lykos).

When the involved goods are identical in part, a lesser degree of similarity between the marks  is needed to support a finding of likelihood of confusion. The examining attorney relied on the proposition that similarity in sound alone may support such a finding. She contended that PUBLIX is identical in sound to the plural version of PUBLIC. Since GOODS is disclaimed by applicant, and PUBLIC is the first word in applicant's mark, she found PUBLIC to be the dominant element.

Applicant maintained that the examining attorney improperly dissected its mark, and that the marks as a whole engender different meanings and commercial impressions: PUBLIX is a coined term with no recognized meaning, while PUBLIC GOODS conveys a meaning of social benefit.

The panel majority found the differences in connotation and commercial impression to be critical. The evidence established that PUBLIC GOODS projects the connotation and impression that applicant's products "are available to all consumers due to their affordability, and beneficial to the public because they are environmentally safe." [N.B.: Nothing in the identification of goods or the mark itself says that they are inexpensive or environmentally safe - ed.].

The majority concluded that the differences in meaning and commercial impression outweighed the other du Pont factors, and so it concluded the confusion is not likely and it reversed the refusal.

Judge Mermelstein, in dissent, agreed that PUBLIC GOODS appears to have a particular meaning in the field of economics, "as a product which is 'non-rivalrous' and 'non-excludable." But "[i]t is far from clear that purchasers of Applicant's goods ... would ascribe that meaning to the mark when it is encountered on shampoo, toilet paper, and toothbrushes." Purchasers would more likely consider the mark to refer simply to goods available to the public.

Judge Mermelstein disagreed that PUBLIX has no recognized meaning. "PUBLIX is a homophone and an obvious misspelling of the plural or possessive of PUBLIC."

The addition of the word GOODS somewhat distinguished applicant's mark, but Judge Mermelstein would assign little weight to that word, and he noted that it is the first word in a mark that is most likely to be remembered by consumers.

Considering the marks in their entireties, Judge Mermestein would find them "sufficiently similar given the identical and closely related goods at issue," and he would affirm the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do? By the way, what is the meaning of "cleaned up" in the citation at the top of page 16 of the opinion?

Text Copyright John L. Welch 2019.


At 9:36 AM, Anonymous Anonymous said...

Per Bryan Garner: "If a recent opinion quotes an earlier source, using ellipsis dots and brackets, and in quoting that opinion you need to add still more, it’s fair to clean it up and simply signal that you’ve done so. The way to do that is to add “(cleaned up)” at the end of the citation." https://www.lawprose.org/lawprose-lesson-303-cleaned-up-quotations-and-citations/

At 10:53 AM, Blogger Bob Klein said...

My first reaction was to think that "Publix" was the supermarket chain. I'm assuming that Publix branded personal care products are only sold in Publix supermarkets, but does that matter? Would Public Goods ever be sold at Publix?

At 11:00 AM, Blogger Eddie said...

Tough call by if you have to err, err on the side of over-cautious separation. We don't want marks breathing down the neck of other marks because they're so close. It just creates a mess.

At 11:15 AM, Blogger TM Guy said...

If "PUBLIX is a homophone and an obvious misspelling of the plural or possessive of PUBLIC," and the products sold under this mark are sold to the public, then under the Board's 2(e)(1) precedents, shouldn't this mark be unregistrable as generic?

At 11:15 AM, Anonymous Miriam Richter, Ft. Lauderdale, FL said...

As a frequent Publix shopper, I can tell you that I never ever thought of Publix as a homophone of public's! Further I thought the double entendre of PUBLIC GOOD was very clever! To make matters more interesting, many people in S. Florida (where Publix is really the only major chain for the masses i.e. not Whole Foodsy) have a nickname for it that sounds like the name of a body part - hint: leave out the L). Poor decision.

At 11:19 AM, Anonymous meh said...

Re: "cleaned up," see https://reason.com/2018/07/24/new-twist-on-legal-citations-the-cleaned/

At 11:41 AM, Anonymous Anonymous said...

Looks like one lawyer started a citation revolution via Twitter: https://telioslaw.com/blog/twitter-shakes-bluebook-case-cleaned-quotations


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