Friday, December 09, 2022

TTABlog Test: Is "SMALL WINS" Confusable with "BIG WIN" for Candy?

The USPTO refused to register the mark SMALL WINS for "sweets and candies, namely, gummies and soft candies," finding confusion likely with the registered mark BIG WIN for "candy." The goods are legally identical, and so the Board presumed that they travel in the same trade channels to the same classes of consumers. But what about the marks? How do you think this came out? In re Sugar Free Specialties, LLC, Serial No. 90706411 (December 7, 2022) [not precedential] (Opinion by Judge Jonathan Hudis).

There was no evidence to suggest that the cited mark is conceptually or commercially weak, and so it merited "the typical scope of protection afforded a mark registered on the Principal Register pursuant to Trademark Act Section 7(b), 15 U.S.C. § 1057(b)."

Comparing the marks, the Board observed that "while the terms WINS and WIN are highly similar, the terms SMALL and BIG appear and sound different." It noted, however, that the marks have "the same format, structure, and syntax." Moreover, the marks "have similar cadences and intonation," and so the Board found them to be "more similar than they are different in appearance and sound."

As to meaning and commercial impression, the Board found that WINS and WIN are the dominant elements in the respective marks, despite the fact that SMALL and BIG are the first words in the marks, because those words are "more common and less distinctive terms."

Applicant Sugar Free argued, inter alia, that "BIG WIN could mean large victory, but it could also mean pretentious victories, chief victories or magnanimous victories. . . . SMALL WINS could mean little victories, or it could mean petty victories, weak victories or inconsequential victories." The Board was unmoved, agreeing with Examining Attorney William Verhosek that consumers are more likely to attribute to the marks positive meanings and commercial attributes rather than "the negative connotations and marketing traits ascribed to them by Applicant." Moreover, applicant’s SMALL WINS candies "could be thought of by consumers as a line extension of Registrant’s BIG WIN candies, offered by the same company."

The Board concluded that "SMALL and BIG, when combined to form a part of each of the marks SMALL WINS and BIG WIN, even though are antonyms, are insufficient to differentiate the marks in meaning and overall commercial impression."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I dissent. BTW, I find the "line extension" argument to be pretty meaningless. It seems like one could nearly always say that when the marks have a word in common.

Text Copyright John L. Welch 2022.


At 8:28 AM, Blogger Gene Bolmarcich, Esq. said...

AGAIN..THAT *&!% line extension argument! Where did that come from? Did the TTAB do a marketing study? I call BS.

At 10:28 AM, Anonymous Anonymous said...

Shouldn't the Board have to support its "line" argument with some evidence, like they do when they argue goods/services are related? Provide some examples.

At 11:54 AM, Blogger TMAttorneyHeller said...

In my opinion, line extension argument is good when the products are the same and travel in the same channels.

At 5:02 PM, Anonymous Anonymous said...

This is absurd. But at least there wasn't a failure-to-function refusal. I can see it clearly: Winners get prizes and sometimes refer to these prizes as "wins." Since prizes, especially small prizes, may include candy, consumers would not recognize SMALL WINS as designating the source of the candy.

At 1:20 PM, Blogger Gene Bolmarcich, Esq. said... may be "good" but are you supporting the TTAB making up arguments that should be based on evidence just to get them to their predetermined conclusion? Nobody should


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