Wednesday, September 16, 2020

TTABlog Test: Is "MF MIRANDA FRYE & Design" Confusable with "FRYE" for Jewelry?

The USPTO refused to register the word-plus-design mark shown below, for jewelry, on the ground of likelihood of confusion with the registered mark FRYE, also for jewelry. Since the goods overlap, the Board must presume that the channels of trade and classes of consumers for those goods are the same. But what about the marks? How do you think this came out? In re Miranda Frye Inc., Serial No. 88347449 (September 10, 2020) [not precedential] (Opinion by Judge Thomas W. Shaw).

The Board noted that the cited mark is in standard characters and could be displayed in a style similar to that of applicant. Nothing in the record suggested that FRYE has any significance other than as a surname.

[A] surname preceded by a given name or initials is a common, highly conventional combination of word elements, and the name MIRANDA FRYE could well be interpreted as a more specific reference to a person or company that is otherwise identified by the surname FRYE.

 
The Board has held that the addition of a given name to a surname is insufficient to distinguish the combination from the surname alone, for Section 2(d) purposes. For example BRUCE WINSTON similar to WINSTON for jewelry; JOSE GASPAR; SAM EDELMAN.
 
The Board acknowledged that the initials MF and the surname MIRANDA appear prominently in applicant's mark, and it is often the first part of a mark that is more likely to be remembered and used to call for the goods. "Taken as a whole, MF MIRANDA FRYE could be perceived as the full name and initials of the person or company identified by the surname FRYE alone."
 
The Board found the word FRYE to be the dominant portion of the marks, and that they are "far more similar than they are different and, overall, convey similar commercial impressions. That is to say, the marks appear to be variations of each other that nonetheless point to a common source."   

And so the Board affirmed the Section 2(d) refusal.


Read comments and post your comment here.

TTABlogger comment: How did you do? If FRYE is a surname, would consumer expect there to be different, unrelated people with that same surname?

Text Copyright John L. Welch 2020.

posted by John L. Welch @ 9/16/2020   5 comments

5 Comments:

At 9:00 AM, Anonymous Dave Oppenhuizen said...

I feel like they got this one right. Not so sure about that recent Heritage Southeast Bank one, but in this case the applied-for registration looks like a variation of the registered mark FRYE, so source confusion seems like a strong likelihood.

 
At 12:57 PM, Blogger Candi McBride said...

The thing I find curious is how FRYE in standard characters was registered on the Principal Register (not 2(f)) if "Nothing in the record suggested that FRYE has any significance other than as a surname." I followed the trail of now expired registrations to the first registration -- filed 175; registered 1976; first use 1952. Not a 2(f) or a Supplemental registration in the bunch.

 
At 3:50 PM, Blogger Miriam Richter, Esq. said...

This makes me think of the Gucci family mess! If the logo, with out the words, is clear, just refile!

 
At 5:57 PM, Anonymous Michael Hall said...

Candi, "In the past, the USPTO did not print §2(f) notations on the registration. Therefore, the absence of a '§2(f)' notation on an older registration does not necessarily mean that the mark was registered without a §2(f) claim." TMEP 1212.10

 
At 2:22 PM, Blogger Candi McBride said...

Thank you Michael Hall. I have a follow-up question - if a new mark registers because of a 2(f) registration, wouldn't that mark be 2(f) as well? (Not that it would change the outcome of this decision.)

 

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