Wednesday, February 17, 2021

TTABlog Test: Is BEENDER Confusable With TINDER for Dating App Software?

Pooria Shahin applied to register the mark BEENDER (in standard character form) for "computer application software for mobile phones, namely, software for social introduction and dating," but Match Group, LLC opposed, claiming a likelihood of confusion with, and likely dilution of, its registered mark TINDER (standard form) for overlapping goods. The Board found the TINDER mark to be "very strong" for likelihood of confusion purposes, but not famous for purposes of dilution. But what about the marks? How do you think this came out? [See results of Twitter poll, below] Match Group, LLC v. Pooria Shahin, Opposition No. 91241077 (February 11, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).
Strength of the TINDER mark: Revenue and usage data, and especially the unsolicited references to TINDER in news articles posted on the Internet, led the Board to find that "TINDER falls on the very strong side of the spectrum of very strong to very weak and, thus, TINDER is entitled to a broad scope of protection."

The Goods: The TINDER registration covered "downloadable software in the nature of a mobile application for internet-based dating and matchmaking," but applicant Shahin (appearing pro se) argued that the involved goods are different:

beender was created because of inadequacy and sketchiness of online dating apps, where you are introduced to strangers. As the opposing party describes in its written argument, TINDER® tries “to decrease creepiness of communicating with strangers”, whereas beender is an app designed to facilitate approaching people you meet in person, and not strangers.

The Board, however, pointed out once again that it must "look to the description of goods in the application and registration, not to extrinsic evidence about the scope of the goods" and, in any case, "Applicant’s argument does not present any meaningful distinction between his software and Opposer’s software: that is, both products seek to make meeting people easier or less difficult."

The Marks: The Board noted that when the involved goods are (in part) identical, a lesser degree of similarity between the marks is required to support a findig of likelihood of confusion. (FWIW, Applicant's drawing depicted the mark in lower case letters (beender), but he did not claim any special form for the mark.)

A mark displayed in standard form is not limited to any particular depiction of the mark. For example, Applicant Shahin displays his mark as follows:  

Opposer, whose registered mark is depicted in standard character form, may display its mark thusly:

[Does this point make any sense? - ed.].

"Under these circumstances, including the renown of Opposer’s mark and the identity of the services, the marks are similar, albeit not identical in appearance."

The Board also found that "beender" could be pronounced as "bender," since the word "been" is pronounced as "ben." [That pronunciation never crossed my mind. I think applicant's mark would be pronounced "bean-der." - ed.] . Despite no apparent supporting evidence, the Board concluded:

[O]n this record, it strains credulity to reject finding that a significant segment of consumers will pronounce Applicant’s mark as rhyming with Opposer’s mark and instead find that consumers will use some alternative pronunciation (although some might).

The Board bent over even further toward opposer when it considered the meanings of the marks. Applicant Shahin maintained that "beender" is a term he coined, derived from the phrase "been there, done that." The Board, however, noted that some dictionaries define "bender" as a slang term meaning “a drinking spree,” and the Urban Dictionary, one website, and one blog post refer to a "tinder bender" as a "string of dates." According to the Board, some users "may believe that beender is a shortened form of 'Tinder Bender." [Where's the proof? - ed.]

Opposer’s contention that “no evidence in the record suggests BEENDER has a commercial meaning different from Opposer’s TINDER® mark” and “consumers are more apt to believe [beender] is an extension or variation of, or otherwise related to, [Opposer’s] famous TINDER® app” is not frivolous. [Doesn't opposer have the burden of proof? - ed.]

The Board therefore sustained the Section 2(d) claim.

Dilution: Opposer's evidence of fame for dilution purposes fell short because it failed to show that the mark is famous to the general public, as opposed to users of mobile dating apps (i.e., niche fame). And so opposer's dilution claim was dismissed.

Read comments and post your comment here.

TTABlogger comment: I'm not convinced. How about you? The results of a Twitter poll that ran for five days:

Text Copyright John L. Welch 2021.


At 9:31 AM, Anonymous Anonymous said...

Wow, this decision is a reach on multiple levels.

As for the Board's point that Opposer *could* use its standard-character mark in the same format as Applicant uses its standard-character mark, is there any limiting principle to this analysis? For example, could the Board find the standard-character mark GYROPOP similar to the standard-character mark YELLOW ROSE on the ground that the letters "RO" in each mark *could* be used in the same highly-distinctive font? Sure, that's going down the rabbit hole, but that's where we are if you take that type of analysis seriously.

At 9:52 AM, Anonymous Anonymous said...

Agreed. The TTAB got it wrong.

At 10:07 AM, Anonymous Paul Rapp said...

But GRINDR has been approved for online dating twice. And Urban Dictionary is
not a reliable source. It approves everything that's sent to them, and then tries to
sell the poster a coffee cup. We've made stuff up, ridiculous phrases with equally
ridiculous definitions. Everything gets approved and posted in minutes....

At 10:35 AM, Anonymous Anonymous said...

Decision doesn't really make any sense. Almost every native English speaker will instinctively pronounce it BEAN-der because it's reasonable to assume that if they wanted it pronounced to rhyme with Tinder, they would have used the unambiguous spelling 'bender'.

At 10:52 AM, Blogger Eddie said...

What? No way. Nobody would confuse beender is Tinder. Doesn't look the same. Doesn't sound the same.

At 12:23 PM, Anonymous Anonymous said...

Maybe it's a regional thing, but the prevailing American pronunciation of "been" does rhyme with "tin."

Why would the board use that horrendous example of Tinder rendering its mark like Beender? Who knows. It should have just made the point that since they are both standard character registrations, how they might be rendered in use is irrelevant.

At 1:55 PM, Blogger Unknown said...

Agree that TTAB got this one wrong. I also think people who use these dating apps can decipher the difference between them, a certain level of sophisticated consumerism.

At 3:19 PM, Anonymous Anonymous said...

The judge must have been on a BeenDer.

At 1:13 PM, Anonymous Anonymous said...

I wonder if result would be different if they spelled it as BEANDER.


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