Strength of the Cited Mark: Opposer Nfinity did not provide evidence of its sales figures or marketing expenditures, nor any market share analysis. Nonetheless, its evidence regarding sales efforts and sponsorship of cheerleading tournaments, and the fact that the mark is inherently distinctive, led the Board to conclude that Nfinity's mark is "reasonably strong commercially."
Similarity of the Marks: “[S]imilarity in appearance between marks is really nothing more than a subjective ‘eyeball’ test. Because a picture is worth a thousand words, there is little in the way of guidelines to determine that degree of visual similarity which will cause a likelihood of confusion of buyers.” J. Thomas McCarthy, 4 McCarthy on Trademarks and Unfair Competition § 23:25 (5th ed. 2020).
The Board observed that Opposer Nfinity’s mark, which Nfinity calls its "'Infinity' trademark," has the appearance of a stylized “infinity” symbol, i.e., a figure-eight on its side. The “infinity” symbol overlaps in the middle to complete the figure eight. On the other hand, Applicant Wooter’s mark has the appearance of two circles that open up into one another. Nfinity's mark has a three-dimensional quality, whereas Wooter's mark seems two-dimensional and flat.
Opposer’s mark features a stylized infinity symbol, while Applicant’s mark features a stylized depiction of a design which does not convey the same impression as Opposer’s mark. Apart from the fact that both marks feature two lobes, the marks contain different elements, including lobes of different shapes and configurations.
The Board concluded that, although there is a "general similarity" between the marks, the similarity is outweighed by the differences. "When viewed in their entireties, the designs of Opposer’s and Applicant’s marks are clearly distinct in overall appearance such that they create different overall commercial impressions on purchasers."
The Sixth DuPont Factor: Wooter submitted nineteen third-party use-based registrations for marks that include an "infinity loop" symbol, covering the same goods, or related goods, to those listed in Nfinity’s registrations. However, there was no evidence regarding use of these marks, and so the third-party registrations were entitled to "very little weight." "The fact that there are a number of registered marks containing an infinity design does not reflect a crowded marketplace, nor is it evidence of descriptiveness."
Conclusion: The Board concluded that the first DuPont factor - i.e., the dissimilarity of the marks - was dispositive, and so it dismissed the opposition.
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TTABlogger comment: To me, Nfinity's mark looks more like a mobius strip than an infinity symbol.
Text Copyright John L. Welch 2021.
Wow, talk about a case of impermissible dissection of the marks. 4 out of 5 consumers who view those marks in passing will undoubtedly get them confused.
ReplyDeleteJohn: In fact, recent developments in the neuroscience of shape perception have made a possible science-based determination of how different is different. Specifically, our research team has developed and published such a test for design patent cases known as the Empirical Ordinary Observer Test (EOOT). The link to the validation paper is below. The methodology has recently been accepted by the court in a major design patent case. The same methodology has proven successful in copyright matters as well.
ReplyDeleteEOOT paper on SSRN: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3620088
Charles L. Mauro CHFP
President / Founder
Mauro Usability Science.
The Sixth DuPont Factor: Wooter submitted nineteen third-party use-based registrations for marks that include an "infinity loop" symbol, covering the same goods, or related goods, to those listed in Nfinity’s registrations. However, there was no evidence regarding use of these marks, and so the third-party registrations were entitled to "very little weight." "The fact that there are a number of registered marks containing an infinity design does not reflect a crowded marketplace, nor is it evidence of descriptiveness."
ReplyDeleteSo, "use" based registrations are entitled to very little weight as to use of the marks? How far do you think an applicant would get making that argument to an examiner after the examiner cites third party registrations as evidence of the relatedness of goods/services?
Phew. Glad to see they didn't overthink this.
ReplyDelete