The Trademark Trial and Appeal Board for the second time this year considered what was happening in the real world marketplace to determine if consumers were likely to confuse the ASKBOT and ASK trademarks. ASKBOT, Spa filed a trademark application to register the mark ASKBOT in connection with software for creating online forms that allow the posting of questions and answers. The ASKBOT software is sold B2B with the users never seeing the registered trademark.
IAC Search & Media, Inc. petitioned to cancel the ASKBOT on the ground that the mark was likely to confusion with its ASK mark for a search engine service. As we have reported time and time again, the Board generally constrains its analysis of the relatedness of goods or services to the descriptions contained in the registration and application at issue. However, when the identification of goods or services descriptions are technical or vague and require clarification, it is appropriate for the Board to consider extrinsic evidence of use to determine the meaning of the identification of goods or services descriptions.
In this case, the Board did not describe what was technical or vague about the descriptions in the registrations at issue. And although it concluded that the consideration of extrinsic evidence was appropriate, it found that the goods at issue were related.
What the Board used the extrinsic evidence for was to identify differences in the channels of trade and classes of consumers. And what the Board found was that IAC Search & Media’s customers and prospective customers were unlikely to encounter the ASKBOT mark because they target consumers whereas ASKBOT, Spa targets businesses.
The nail in the coffin for IAC Search & Media was when ASKBOT, Spa was able to cross the 10 third-party registration threshold by producing 11 third-party registrations for marks containing ASK in connection with services related to online searching. These registrations coupled with the dictionary definition of “ask” were enough for the Board to conclude that the ASK mark was inherently weak and that would be something that IAC Search & Media would be unable to overcome.