Break Up a Trademark when Searching for Better Results

In previous posts, we discussed the principles the Trademark Office applies when assessing the similarity of two trademarks and how some of those principles are applied in practice. But we have never discussed the importance of breaking up a trademark when conducting a trademark search. Breaking up a trademark and searching the parts is just as important as searching the entire word. Fortunately, the Trademark Trial and Appeal Board provided us with a decision that highlights this tip.

Applicant Somasundaram Ramkumar filed an intent-to-use trademark application for the mark JIOKIA in connection with, among other services, “electronic mail services, namely, electronic transmission of mail.” The Trademark Office examined and approved the JIOKIA mark for publication. Nokia Corporation timely opposed the registration of the JIOKIA mark alleging prior rights in the NOKIA mark for, among other goods and services, “telecommunication and wireless communication services, namely, electronic mail.”

The services were identical, the service descriptions were unrestricted, and Nokia established its NOKIA mark was strong. Therefore, the critical issue, in this case, was the similarity of the marks confusion factor. The Board found that the JIOKIA and NOKIA marks end with the same four letters: O-K-I-A. This similarity not only caused the two marks not only to look similar but also sound similar. The Board went on to speculate about the impression a consumer would have in the hypothetical scenario where the consumer only heard the ending of each mark. In the end, the Board found that the similarities of the marks outweighed the differences.

For trademark searchers, the important take away is that the Board focused on the similar parts of the two trademarks. This tells us that we need to include the parts of the marks we are searching in our trademark search plan as well.

Some trademark search options on the market profess to have sophisticated algorithms that can find phonetically similar marks to what we are searching. You can see for yourself how helpful this type of algorithm is at the WIPO Global Brand Database. In the text box, enter the word NOKIA, and from the drop-down menu choose “fuzzy” or “phonetic”. Then click search. The JOIKIA application was filed on May 24, 2017 with the USPTO. When you review the search results you will see that the JOIKIA application does not appear.

What this example shows you is that no software application will ever be as precise about breaking up a trademark you are searching than you. That is why BOB gives you the option to break up the trademark you are searching the way you think is most appropriate. You will uncover more potentially problematic marks when you plan your search strategy rather than blindly relying on a software application to do the planning for you.

The Factual Situation When Trademark Design Trumps Words

Greater weight is often given to words over designs when evaluating the similarity of two trademarks because purchasers use words to request or refer to goods or services. The United States Court of Appeals for the Federal Circuit, however, has said there is no general rule that words trump design in the likelihood of confusion analysis. Therefore, there are some situations where the use of similar designs is likely to cause consumer confusion even when the design is combined with words.

The Trademark Trial and Appeal Board recently decided in In re Information Builders Inc. a case and identified one of those factual situations where designs will trump words. Information Builders Inc. filed a multiclass, trademark application to register the following mark in connection with computer software in International Class 9 and computer system design services in International Class 42:

The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the following prior registered mark also for computer software in International Class 9 and design services in International Class 42:

The TTAB found that the goods and services at issue were legally identical in part, which meant that less similarity between the marks was required in order for a likelihood of confusion to exist, the goods and services were presumed to travel in the same channels, and appeal to the same class of consumers. Finally, Information Builders Inc. only submitted seven, third-party registrations containing similar designs, which was three shy of the apparent 10 third party registration minimum needed to establish conceptual weakness.

Information Builders Inc. was facing an uphill battle when the TTAB turned to the mark similarity likelihood of confusion factor. The Trademark Office required a disclaimer of the words INFORMATION and BUILDERS, and Information Builders Inc. voluntarily agreed to the disclaimer requirement. In making the voluntary disclaimer, Information Builders acknowledged that the design element in its mark was dominant.

Additionally, the design element was not separate but integrated into the word INFORMATION, unlike the ABBY decision a couple of years ago. When a consumer reads the word INFORMATION it would be impossible not to encounter the design. When the design is a dominant element and is integrated into the literal portion of the composite mark, then the general proposition that words trump design is inapplicable. Therefore, the TTAB found the marks are similar and sustained the registration refusal.