TTABlog Test: Is DUO for Personal Mobility Devices Confusable with DUOPOWER for Land Vehicles?
The USPTO refused to register the mark DUO for "motorized, electric-powered, self-propelled, self-balancing, wheeled personal mobility, transportation device," finding confusion likely with the registered mark DUOPOWER for "electric vehicles, namely, buses; buses and land vehicles; engines and motors for buses and land vehicles; drive trains for use in land vehicles and power trains for use in land vehicles; vehicle power train mechanism comprised of clutch, transmission, drive shaft, and differential." Applicant DEKA argued that the goods are "divergent" because its device is fully electric while the registrant's vehicles are gas/electric-powered, that DUO is a weak formative, that the marks are "significantly different," and that consumers will exercise care in their purchasing decisions. How do you think this appeal came out? In re DEKA Research & Development Corp., Serial No. 98740807 (November 7, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).
Beginning with the goods, the Board found DEKA's "motorized, electric-powered, self-propelled, self-balancing, wheeled personal mobility, transportation device" to be fully encompassed within Registrant’s "land vehicles," and so it deemed the goods legally identical in part. The legally identical goods presumably travel in the same trade channels to the same classes of consumers. The Board concluded that "the second and third DuPont factors weigh heavily in favor of likelihood of confusion." [Why "heavily"? - ed.].
Regarding the strength or weakness of the cited mark, DEKA pointed to four existing registrations for DUO-formative marks - DUOLEVER for motorcycles and parts therefor; DUO-SKID for street sweeper vehicles; and DUO LIFT for agricultural implements; and REV FLEX DUO for ambulances - but only three were relevant, they were too few in number, and each included an additional element not present in either DEKA’s mark or the cited mark. The Board found the sixth DuPont factor to be neutral.
Turning to the marks, the Board observed that "the common element DUO is the leading term in each mark, rendering it dominant in position, and most likely to be noticed and remembered by consumers." The Board rejected DEKA's argument that the commercial impressions of the marks "diverge meaningfully" due to a purported association of DUOPOWER with hybrid vehicles. "There is no evidence that the addition of POWER changes the meaning of DUO in DUOPOWER."
The Board opined that the word POWER "has some descriptive or suggestive meaning when used with Registrant’s goods, including 'buses and land vehicles,' which must have a power source to operate. It is also descriptive to the extent it is laudatory in nature." "[T]o the extent it is descriptive or suggestive it is appropriately given less weight in the likelihood of confusion analysis than the more distinctive term DUO"
Moreover, according to the Board, "consumers may perceive DUO, the more source-identifying part of the mark, as a brand extension of the senior DUOPOWER mark." [Really? Are consumers that dumb? -ed.].
Considering the involved marks in their entireties, the Board deemed them "similar," and so, the first DuPont factor weighed in favor of likelihood of confusion.
The Board next found that the involved goods "are not the subject of routine purchases, such that consumers may exercise some care in purchasing, but we are mindful that even careful or sophisticated consumers are not immune from source confusion." It found that the fourth DuPont factor weighed slightly against a likelihood of confusion.
Balancing the pertinent DuPont factors, the Board concluded that confusion is likely and so it affirmed the refusal.
Read comments and post your comment here.
TTABlogger comment: Is this an example of the "stacked deck" against Section 2(d) appellants? Seems like the Board knew what conclusion it wanted to reach, and then mechanically applied various of its standard formulae to get there.
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 11/11/2025
8 comments
8 Comments:
If they're going to continue interpreting broad descriptions in a way that defies logic, then the AIGS needs to be pared down to eliminate such broad descriptions that are amenable to this. I am right now dealing with a refusal of a liquor mark based on a chocolate mark. Of course the evidence is that there are liquor filled chocolates but is that "chocolate"? Why isn't it "liquor" (if the volume of both is approximately equal)? There are way too many descriptions in the AIGS that can includes goods of such a narrow type that should be excluded and given their own entry in the AIGS.
Bob Kelson says the Board ignored the effect of the term "namely". It has a strict limiting effect in Australia. Additionally, the Board paid insufficient attention to the difference between the goods and the respective markets.
Not sure I get how DUOLEVER has an extra, distinguishable element but DUOPOWER does not?
I agree that this opinion is another example of deciding the result first and then justify it with boilerplate statements. There appear to be too many Board decisions that are inconsistent and make you at least scratch your head!
I guess the applicant was afraid that using a goods description of two-wheeled electric vehicles would get a 2(e) rejection although it would have distinguished DUOPOWER, so it decided to fight the 2(d) rejection. So the proverbial Scylla and Charybdis.
I am seeing more of this now, the seemingly foregone conclusion the examiner wants to reach and then pretty much the refusal is on autopilot. Very frustrating when you know in the real world confusion is not likely.
AI is ruining the USTO. I am getting the weirdest "related goods" arguments, where "T-shirts and caps" are somehow related to watch cases, jewelry cases, jewelry, tools bags, umbrella via 3rd-party registrations. This is out of control. The case law that focuses on DUO is out-of-date and needs to be overturned. This case represents the reason I now tell my clients that I guarantee nothing because the USTO issues office actions with the strangest refusals I have seen in 35 years. AI is giving the wrong analysis (and opinions). This is only going to get worse...
There were several option here.
I think they could have been more careful about their ID perhaps.
And as far as cited mark, I could be wrong but I suspect the cited registration should not have issued for "buses". I am guessing they only used the DUOPOWER mark on "drive trains" for their electric buses which are sold under a different brand.
Would a Section 18 proceeding work to limit the ID to narrow the ID so it does not conflict with a "wheeled personal mobility, transportation device" or is the cited mark ID already too narrow to limit?
The Board has suggested they are open to seeing these limitation proceedings, but what about examiners?
Do examiners have the last word after an ID is limited and then can still disagree after the Section 18 proceeding that it is still not limited enough?
Did they ask for consent?
This was handled by in-house counsel. Always hire good counsel who can help you avoid an appeal by looking at other options!!
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