Monday, December 19, 2022

"ENDURE" for Fire-Resistant Fabrics Confusable WIth "ENDURE by Acend" & Design for Textile Fibers, Says TTAB

A fairly straightforward Section 2(d) case like this one usually results in an opinion of 15 or 20 pages. This one took 42 pages because it lays out each argument of the applicant and the USPTO and provides a thoughtful analysis and application of the relevant DuPont factors. Definitely worth a read. In sum, the Board found the mark ENDURE for fire-resistant fabrics for textile use, likely to cause confusion with the registered mark shown below, for "textile fibers; textile filaments." In re Precision Textiles LLC, Serial No. 88443643 (December 15, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

The Board began with the sixth DuPont factor, the nature and number of similar marks in use on similar goods. Applicant pointed to three existing registrations, two for the mark ENDURA and one for ENDURALL, but it provided no evidence of use of similar marks. The Board agreed with Examining Attorney Erin Zaskoda Dyer that this wasn't enough to move the needle, and so it accorded the cited mark the normal scope of protection for distinctive marks.

Comparing the marks at issue, the Board found "ENDUR" to be the dominant part of the cited mark because it is the largest literal portion of the mark in terms of size, position, and emphasis. Its location as the first term in the mark further establishes its prominence. As to the appearance of the marks, applicant's mark could be displayed in the same bold capital letters as the word "ENDUR."

Applicant argued that the marks sound different because they contain different numbers of syllables, but the Board "has long recognized that consumers do not process this sort of minutia when forming impressions of marks in their 'mind’s ear.'" [I've never encountered the pharse "mind's ear" before - ed.]. Furthermore, this argument ignores "the penchant of consumers to shorten marks."

As to connotation and commercial impression, the Board was not persuaded that the misspelling of ENDURE as ENDUR would create a difference between the marks.

The Board concluded that "[a] consumer who separately encounters Applicant’s ENDURE mark could readily view it as a shortened version of the literal portion of the cited mark, 'ENDUR By Ascend,' 'with both marks indicating a single source for the goods,'"

As to the goods, the applicant argued that they have different functions for different purposes. The evidence, however, showed that the "textile fibers" identified in the cited registration may be used to create the "fabrics for textile use" for bedding identified in applicant’s application, and thus the goods are somewhat intrinsically related. Moreover, the involved goods are related because they are sold by the same companies, including applicant, under the same mark. The Examining Attorney also submitted 11 third-party used-based registrations of marks covering both "textile fibers" and "fabrics for textile use."

Internet evidence disclosed the sale of both textile fibers and fabrics for textile use by the same entity, establishing that both sets of goods are marketed through the websites of fabric companies and, by inference, through any corresponding brick-and-mortar stores.

Finally, the Examining Attorney acknowledged that the goods are purchased by professional buyers, but she argued that these buyers are not immune from trademark confusion. The Board found this factor to favor applicant.

The Board, concluding that the key first and second DuPont factors support a likelihood of confusion, as does the third factor, affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlogger comment: A good illustration of why more than 90 percent of Section 2(d) refusals are affirmed: it can be very difficult to clear the many hurdles presented by TTAB and CAFC precedent.

Text Copyright John L. Welch 2022.


At 9:11 AM, Anonymous Anonymous said...

I never knew (after practicing for close to thirty years) that there is precedent that says one can ignore the design elements in a design mark if the mark will frequently appear in textual materials where the mark must be "verbalized". That doesn't seem right. If an applicant choose to register a design mark, THAT must be the mark analyzed, and nothing else! Not sure how that 1983 CBS case escaped me all these years

At 12:54 PM, Anonymous Anonymous said...

I think the verbalization argument has lost a lot of "air" over the last few decades. People shop with their eyes now and not with their ears. When is the last time your heard a Levi's radio ad?


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