The two most talked about likelihood of confusion factors are the: (1) similarity of the marks; and (2) relatedness of the goods or services. While these factors possess their own intricacies, trademark applicants seem to misapply the trademark strength factor the most. The misapplication of this factor then leads trademark applicants to make poor filing and prosecution decisions.
Two recent Trademark Trial and Appeal Board decisions demonstrate the problem when misapplying the trademark strength factor. Ming’s Mark Inc. applied to register the mark POWER TECHON for, among other goods, “electrical power extension cords.” Gehr Industries, Inc. opposed the registration of Ming’s Mark on the ground that it was likely to cause confusion with its prior registration for POWER TECH in connection with “electric extension cords for use with portable electric hand tools . . . .”
Ming’s Mark argued that Gehr Industries’ POWER TECH mark was weak and attempted to prove it the following ways:
- Offering the dictionary definitions of POWER and TECH. Unfortunately, Gehr Industries’ POWER TECH mark was registered on the Principal Register so under Section 7(b) of the Trademark Act the mark was presumed valid. And since the registration was not based on Section 2(f) of the Trademark Act (i.e., acquired distinctiveness), the mark was at least suggestive.
- Offering TESS listing of 100 third-party pending applications and registered marks for or including the POWER term in International Classes 9 and 2. Offering the same TESS listing for the TECH term. First, listing from the Trademark Office database is not evidence. A trademark applicant must submit title and status copies of each registration. Second, don’t waste your time with applications, the Board will not consider them. Third, make sure the third party registrations correspond to the mark you are claiming is weak. In this case, third-party registrations for POWER TECH needed to be offered. Fourth, don’t focus on the class numbers. the focus of the third-party registrations needs to be on identical or related goods.
- Offering the fact that other Examining Attorneys registered marks for or containing POWER TECH without issue. Prior decisions by Examining Attorneys do not bind subsequent Examining Attorneys. Each trademark application must be decided on its own merits and you will be reminded of this time and time again if you try to make this argument.
None of Ming’s Mark’s strength arguments persuaded the Board; therefore, the opposition was sustained.
Here for the Girls, Inc. sought to register the mark HERE FOR THE GIRLS for providing emotional support services for young women affected by breast cancer. The Trademark Office refused registration of this mark on the ground that is was likely to cause confusion with the prior registered mark FOR THE GIRLS in connection with promoting public awareness of breast cancer.
Here for the Girls argued that THE GIRLS was weak by offering Google search results. Google search results are ineffective strength evidence because they provide little context with respect to the use of the mark. To make Internet evidence of record and persuasive on the strength factor, you need to offer pages from the website and some context for how many consumers likely encountered the website. Here for the Girls did none of this; therefore, the Board concluded it had no evidence to support its weakness argument.
Getting the strength analysis right is critical and something that must be assessed during the trademark search process, and certainly when a registration refusal is made or an enforcement proceeding is threatened or commenced.