IMAGINELABORATORIES.COM Confusable With IMAGINATION LABS For Telecommunication Consulting Services, Says TTAB

The Board affirmed Section 2(d) refusals to register the proposed marks IMAGINELABORATORIES.COM, IMAGINELABORATORY.COM and IMAGINELABS.NET for telecommunications technology consulting services, finding confusion likely with the registered mark IMAGINATION LABS for, inter alia, "telecommunications consultation and advice." Applicant, appearing pro se, pointed to its existing registration for IMAGINATION ARTS LAB, over which the cited registration issued, but the Board once again observed that it is not bound by the decision of an examining attorney in a prior application with a different records. In re Imagine Labs LLC, Serial Nos. 88931892, 88931930, and 88931972 (June 21, 2022) [not precedential] (Opinion by Judge Karen Kuhlke).

Applicant argued that the difference between the words IMAGINATION and IMAGINE distinguished the marks": "Having imagination and not actively imagining is equal to not having any imagination. Therefore the act of imagining something is vastly different than the inherent ability of imagination in every human mind." [Huh? - ed.]. Applicant also contended that because its marks are domain names and the cited mark is a "Brand Service name" there is no cause for confusion. [Huh? - ed.]. The Board, not surprisingly, found that the similarities in the marks outweighed their differences.

With regard to applicant's prior registration, the Board noted that in "unusual circumstances" an applicant's prior registration may deserve weight in the confusion analysis. See In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). However, invocation of that precedent requires that the marks and the services be identical or nearly so. That was not the case here.

Applicant argued that the registrant does not actually offer all of the services listed in the cited registration, but the Board pointed out once again that it must make its decision based on the services as recited in the registration, not on the actual use of the registered mark. In light of third-party registration and usage evidence, the Board found the services to be related and offered in the same channels of trade.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Is this a WYHA? Or should we give this pro se applicant a pass?

Text Copyright John L. Welch 2022.