Thursday, April 20, 2023

TTABlog Test: Is "FREEDOM X" Confusable With "OXLIFE FREEDOM" For Related Medical Products?

The USPTO refused to register the mark FREEDOM X, in standard character and stylized forms, for "cannulas for oxygen concentrators for medical applications," finding confusion likely with the registered mark OXLIFE FREEDOM for “oxygen concentrators for medical applications." The Board found the goods to be related and complementary, since "cannulas for oxygen concentrators for medical applications are necessarily used with oxygen concentrators for medical applications – at the same time, by the same consumers." But what about the marks? How do you think this came out? In re 3B Medical, Inc., Serial Nos. 88948110 and 88953956 (April 17, 2023) [not precedential] (Opinion by Judge Robert H. Coggins).

The examining attorney maintained that the shared word FREEDOM "stimulates the same mental reaction and creates the same commercial impression in each mark, suggesting 'the condition of being free.'" Applicant argued that the marks sound different and present substantially different connotations and commercial impressions.

Specifically, Applicant contends that the letter X in Registrant’s mark produces a harsh sound, while in Applicant’s mark it is much softer; the word FREEDOM in Registrant’s mark connotes freedom from something, while in Applicant’s mark it means freedom to do something; and, in Applicant’s words, the overall commercial impression of Registrant’s mark "calls to mind the life of oxen (i.e., castrated male cattle) or perhaps life insurance," while Applicant’s marks call to mind "excitement, adventure, and/or cutting edge goods/services . . . ."

The Board found that the word FREEDOM is the dominant element in applicant's marks. In the cited mark, the word FREEDOM is "of slightly more import in Registrant’s mark because . . . FREEDOM is significant in creating the overall commercial impression of this mark."

The Board acknowledged that the additional term OXLIFE in the cited mark lends an overall additional sound and appearance to that mark which is not present in Applicant’s mark. However, the similarity in appearance of the marks as a whole "is enhanced due to the shared word FREEDOM and the appearance of the letter X in each mark – as the second element of Applicant’s marks and as part of the first element of Registrant’s mark."

[T]he additional term OXLIFE in Registrant’s mark does not change the connotation of FREEDOM. Instead, it further enhances the meaning by suggesting the very nature of the goods. As mentioned above, in the context of oxygen concentrators it is likely that the OX portion of OXLIFE will be perceived as “oxygen” instead of, as Applicant contends without evidence, a castrated male bovine animal – an ox. We find that the marks have highly similar commercial impressions due to the shared word FREEDOM.

The Board concluded that confusion is likely, and so it affirmed the refusals to register.

Read comments and post your comment here.

TTABlogger comment: Do you agree with the Board? In the cited mark, I don't think either word is dominant.

Text Copyright John L. Welch 2023.


At 7:20 AM, Blogger Gene Bolmarcich, Esq. said...

I can't disagree more. Similarity in overall commercial impression? Just looking at the two marks for two seconds (forget about studying them carefully after which they become even more dissimilar), and especially given the sophistication of purchaser factor, I was 90% certain that this was a reversal. X vs. OXLIFE and a transposition of terms (I assume)...WYHIAFR?? (I guess so since it was a winer for the EA). My final am I supposed to clear a mark with cases like this looming over my head? Could it be that the Board is being sensitive to the risk of confusion in the medical field?

At 8:00 AM, Blogger Daphne said...

This was a stretch by the board.

At 8:36 AM, Anonymous Anonymous said...

There are over 90 applications and registrations in Class 10 with FREEDOM as the commen element. Not sure why the Applicant did not raise this isssue.

At 9:02 AM, Anonymous Anonymous said...

A systemic flaw of the ex parte appeal process is that only a few applicants can budget the dollars required to develop a convincing evidentiary record on all thirteen du Pont factors. The Board deals us bad law when we give it insufficient facts. FREEDOM seems exceptionally weak for medical devices, as all sellers want to suggest to patients and providers that patients retain a modicum of freedom despite having to use the devices. But apparently, the applicant didn't invest resources in expert declarations or other fact investigations that could have yielded better evidence on multiple du Pont factors. They could apply again and devote resources to developing that evidence if they want the mark.

At 9:48 AM, Blogger John L. Welch said...

I think that if applicant applied again, it would face a res judicata bar. Better to appeal.

At 10:45 AM, Anonymous Anonymous said...

Terrible decision, did the applicant argue sophstication of the goods? They aren't selling toothpaste.

At 1:19 PM, Anonymous Anonymous said...

After the recent crazy decision where the Board inexplicably reversed rejection of basically the same mark as a registered mark in the auto industry, its affirmation of the rejection in this case is even more ridiculous. Surely the sophistication of the purchasers should have been a major factor in favor of the application. What a crap shoot!


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