Friday, February 02, 2024

TTABlog Test: Is UNFORGETTABLE TRIPS Confusable With UNFORGETTABLE HONEYMOONS for Travel Agency Services?

The USPTO refused to register the proposed mark UNFORGETTABLE TRIPS for "travel agency services, namely, making reservations and bookings for transportation" [TRIPS disclaimed], finding confusion likely with the registered mark shown below, for the identical services [HONEYMOONS disclaimed]. Obviously, it all boiled down to the similarity of the marks. Applicant argued that the cited mark is weak in view of third-party uses and registrations in the travel field, and so confusion is not likely. How do you think this came out? In re Brunvoll and Associates LLC, Serial No. 90526989 (January 31, 2024) [Not precedential] (Opinion by Judge Robert H. Coggins).

Of course, because applicant's services and those of the cited registration are identical, the Board must presume that they travel in the same, normal channels of trade to the same, usual classes of consumers. 

The Board first considered the strength of the cited mark. Since the mark is registered on the Principal Register without a Section 2(f) claim, it must be considered inherently distinctive. Under the sixth DuPont factor, the Board considered whether the strength "may be attenuated by '[t]he number and nature of similar marks in use on similar goods [and services].'"

First, evidence that a mark, or a segment of a mark, is commonly adopted by many different registrants may indicate that the common element has some significance that undermines its conceptual strength as an indicator of a single source. * * * Second, evidence that a mark, or a segment of a mark, is used extensively in commerce by a number of third parties may undermine its commercial strength, as the consuming public may have become familiar with a multiplicity of the same or similar marks, and may have learned to distinguish them based on minor differences.

Dictionary definitions of "unforgettable" indicated that the word is suggestive for travel agency services, and therefore has "at least some conceptual weakness." In addition, applicant submitted six third-party, use-based registrations for marks containing that word, for travel-related services, printouts from 11 internet web pages for travel agencies using the term UNFORGETTABLE in their names or products, and a Dun & Bradstreet search report revealing 23 business entries whose names that contain the term "unforgettable" in the "travel and reservation services" industry.

Evidence in the form of listings and advertisements, such as in yellow and white page phone book listings, triggers a presumption that a third-party service mark is in fact in use by third-parties, possibly making a registrant’s mark weak.

Based on this evidence, the Board found that "UNFORGETTABLE-formative marks are both conceptually and commercially weak for travel agency services and, therefore, are entitled to a narrow scope of protection." And so the sixth DuPont factor favored applicant.

The Board then turned to a comparison of the marks. It found that, in light of the weakness of the term UNFORGETTABLE - despite its placement at the beginning of the respective marks - the addition of the differing terms TRIPS and HONEYMOONS was sufficient to distinguish the marks. Although the words HONEYMOONS and TRIPS are merely descriptive and disclaimed, they cannot be ignored in the analysis.

Finally, the Board considered the fourth DuPont factor: "[t]he conditions under which and buyers to whom sales are made, i.e., 'impulse vs. careful, sophisticated purchasing.'" However, there was no evidence regarding the cost of the involved services, and no evidence that the services "will only be available to sophisticated and discerning consumers."

While some purchasers may be discriminating and exercise care in their selection, others may include ordinary consumers exercising an ordinary degree of care. The standard of care is that of the least sophisticated potential purchaser. Stone Lion, 110 USPQ2d at 1163.

The Board concluded that "[t]he ubiquity of UNFORGETTABLE in the travel industry and the additional different wording present in Applicant’s mark outweigh the similarities between the services, trade channels, and consumers. The purchasing conditions and alleged consumer sophistication are neutral." And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: What's the difference between a trip and a vacation? For a vacation, the kids are left at home.

Text Copyright John L. Welch 2024.


At 7:21 PM, Anonymous Sean Dwyer said...

Great article. Is it me or is the new online search tool not even close to as good as the old TESS advanced search tool where you could search like an EA? With a case like this gathering evidence with the new tool seems like the EA would be at a significant advantage. If there is a way to do an advanced search like before I would love to know. Thanks


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