The analysis of the similarity of the marks involves the consideration of three factors: (1) visual similarity; (2) sound similarity; and (3) similar connotation. Generally, the visual similarity of the marks factor trumps the other two factors. But for the second time in about three months, the connotation factor has been the dispositive factor.
Don’t Run Out, Inc. applied to register the mark PUBLIC GOODS (in standard characters with GOODS disclaimed) for a variety of goods including “shampoos.” The Trademark Office refused registration of the PUBLIC GOODS mark on the ground that it was likely to cause confusion with the prior registered mark PUBLIX also for “hair shampoo.” With the goods legally identical and the descriptions unrestricted, the registration refusal turned on the similarity of the marks.
The Trademark Office argued that PUBLIX was the plural version of PUBLIC, and with GOODS disclaimed it was appropriate to compare the dominant portion of the marks. While more weight can be given to the dominant portions of the marks at issue, the final decision still needs to be made based on the marks in their entireties. In this case, the Trademark Trial and Appeal Board found that the addition of the term GOODS materially changed the commercial impression of the mark.
“The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” The words PUBLIC GOODS were taken together project the connotation and commercial impression that Don’t Run Out personal care products are available to all consumers due to their affordability, and beneficial to the public because they are environmentally safe. By contrast, the PUBLIX mark has no well-recognized meaning. As a result, when confronted with both marks, prospective consumers are unlikely to assume the respective goods originate from the same source, despite use in part on identical and highly related goods.
Spend a little time learning how to use wild card symbols and logical operators in your search equations and you will improve the accuracy of your search results. And they really are not that complicated to use. Using truncation symbols is something that could have benefitted Lawrence Charles before he spent what had to be thousands of dollars on his failed attempt to register the TEABLY mark.
Mr. Charles sought to register the mark TEABLY (in standard characters) for “tea-based beverages” in International Class 30. The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark TEABLEE for, among other goods, “tea infusers . . . tea strainers . . . tea balls . . . tea caddies . . . tea canisters . . . tea sets” in International Class 21. Mr. Charles never amended his goods description to reflect the actual nature of his tea-based beverage, and as a result it was an easy refusal for the Trademark Trial and Appeal Board to affirm.
Unfortunately for Mr. Charles, this refusal could have been avoided from the beginning with a proper trademark search. It is important to spend time considering the possible variations of a proposed mark. Once you have identified the possible variations, you can bet there is another variation out there that you did not identify. The way we guard against this possibility is through the use of truncation symbols.
Wild card symbols differ by the databases you are using, so it is important to review whatever key is available to explain the wild card symbols for that database. In the case of BOB’s database, the $$ wild card symbol will look for unlimited space and non-space characters. For Mr. Charles’ search, the mark would have looked like TEABL$$. Considering the similarity of the marks only, this search would have retrieved the prior registered TEABLEE mark.
Mr. Charles likely included in his search equation International Class 30 because that is where his tea-based beverage would be classified. This was his second mistake because focusing on International Classes instead of relatedness of goods is wrong. As we saw in his case, goods classified in International Class 21 were found to be related to his tea-based beverage in International Class 30. That’s why BOB focuses on relatedness of the goods not International Classes when it conducts a trademark search.
If the TEABLEE mark was returned as a potential knockout it does not mean that Mr. Charles could not move forward with his TEABLY mark. What it means is that he needs to be prepared for a refusal and start the application on the right foot.