Is "Make Shift Happen" (Stylized) Confusable With "Shift Happens!" (Stylized) for T-Shirts?

The USPTO refused to register the mark MAKE SHIFT HAPPEN in stylized form (shown first below) for "Hats; Hoodies; Shirts and short-sleeved shirts; T-shirts; Graphic T-shirts," finding confusion likely with the registered mark SHIFT HAPPENS! in stylized form (second below) for "Clothing; namely, bathrobes, hats, and t-shirts." The goods are legally identical in part, but what about the marks? Applicant Marissa Paine argued that the cited mark is weak in light of six existing registrations for SHIFT-formative marks. The Board found that both marks "are a play on the common and informal colloquial expression 'SHIT HAPPENS, and it took judicial notice of the definition of the phrase 'shit happens,'" which is "defined as used to say that bad things happen as part of life and cannot be prevented.” How do you think this came out? In re Marissa Paine, Serial No. 90039694 (May 1, 2022) [not precedential] (Opinion by Judge George C. Pologeorgis).

Since the goods overlap and there are no restrictions in the identifications of goods, the Board must presume that the overlapping goods travel in the same trade channels to the same classes of consumers. Moreover, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Applicant provided no evidence of third-party use of SHIFT HAPPEN(S) or SHIFT-formative marks. The six third-party registrations are "a relatively small number compared to the number of such marks in cases that have found weakness based on those marks."

The third party registrations submitted by Applicant have little, if any, probative value because (1) they are for marks that have differing connotations and overall commercial impressions w hen compared to the cited mark, i.e., SHIFT, SHIFT TEAM and SHIFT SHOP, or (2) they list goods or services that are sufficiently unrelated to the goods identified in the cited registration, i.e., SHIFT HAPPENS for "providing online newsletters in the field of advertising, marketing and public relations" and "motivational and empowerment seminars."

The Board concluded that Applicant Paine failed to show that the cited mark "has been so extensively adopted by third-party registrants to allow Applicant’s proposed mark to register."

As to the marks, the Board found them to be "similar in connotation and commercial impression not only because both marks are a play on the common and informal colloquial expression 'SHIT HAPPENS,' but also because the marks are visually and aurally similar in that they both include the terms SHIFT and HAPPEN(S)." Neither the use of the plural "happens" nor the exclamation point in the cited mark altered the similarity of the marks. Although the stylizationd of the marks diffes, "it is the literal portion of a mark, rather than any design or stylization feature, which is more likely to be remembered and relied upon by customers in calling for the goods."

Further, even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that Applicant’s goods sold under the proposed mark constitute a new or additional product line from the same source as the goods sold under the registered mark with which they are acquainted or familiar, and that Applicant’s mark is merely a variation of, or derivative of, Registrant’s mark.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Should the different stylizations carry more weight in the 2(d) analysis?

Text Copyright John L. Welch 2022.