Have you ever noticed or even pay attention to the brand name of the concert speakers? No, us either. But according to the Trademark Trial and Appeal Board, most consumers must pay attention to and could be confused by a similar trademark used on a concert speakers and consumer speakers. The astonishing aspect of this case was the level of detail the applicant – David Mottinger – included in its identification of goods description in order to avoid the issue the Trademark Office had with his application.
In In re David Mottinger the Trademark Trial and Appeal Board had to decide whether GUARDIAN AUDIO for – take a breath – “audio equipment for use in commercial entertainment systems for use in large public venues, namely, amplifiers, speakers, receivers; all of the foregoing sold only to sound contractors for commercial installation, and to sound production companies, and none of which are targeted to or designed for use by the general consuming public” was confusingly similar to EGUARDIAN for, among other goods, the broadly worded audio products that could include consumer speakers and concert speakers.
This case was no exception to the tried and true statement made by the Trademark Trial and Appeal Board that the relatedness of goods determination must be made based on the descriptions contained in the application and registration at issue. With respect to Mr. Mottinger’s GUARDIAN AUDIO application, there is not much more detail he could have included to avoid the issue the Trademark Office had with his application. But because the EGUARDIAN registration broadly described its audio goods, the Board found there was overlap; thus, the relatedness factor favored a likelihood of confusion.
Moreover, it is high time the Trademark Trial and Appeal Board stop with this policy of only considering what is described in the application and registration. In this case, Acceptto Corporation – the owner of the EGUARDIAN registration – uses the mark only as the name of a driver. But because it only had to show use on 1 of the goods described in the then application it was able to register the mark for the entire goods description if it was willing to the risk on a fraud claim most likely because the Trademark Trial and Appeal Board has been so milk toast on fraud claims since the Bose decision. All the Board’s policy is doing is pushing more people to file partial cancellation actions, which will further clog the TTAB docket.
Trademark searchers need to pay attention to how marks are actually being used if a mark appears problematic from the search results.