Reversing Words Generally Does Not Differentiate Two Marks

A common question is whether reversing words is enough to avoid a finding of likely confusion with another mark. The short answer is no, reversing words is generally insufficient to avoid a finding of likely confusion. The Trademark Trial and Appeal Board recently dealt with this issue in the In re Cloud Crowding Corp. case.

The Trademark Trial and Appeal Board recently decided a case involving the marks ATOMIC DATA and DATA ATOM. Cloud Crowding attempted to register the mark DATA ATOM for:

“***; Consulting services in the field of cloud computing; ***.”

The Trademark Office refused registration of Cloud Crowding’s application on the ground that it was likely to cause confusion with a prior registered mark ATOMIC DATA for:

“Computer services, namely, information technology consulting services; ***.”

Two key factors in every Section 2(d) case are the similarity of the marks and the similarity of the goods or services, because the “fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).

Similarity of the Goods or Services

With respect to the identification of services descriptions, the Examining Attorney argued that several of the broad descriptions used encompass the more narrow descriptions in both the DATA ATOM application and ATOMIC DATA registration.  For example, the ATOMIC DATA registration broadly identifies “Computer services, namely, information technology consulting services,” encompass the narrower, field-specific “Consulting services in the field of cloud computing” in the DATA ATOM application. Because the general consulting services identified in the ATOMIC DATA registration encompass the specific consulting services identified in the application, the services are legally identical. In re RiseSmart Inc., 104 USPQ2d 1931, 1934-35 (TTAB 2012).

Similarity of the Marks

The marks are slightly different in appearance and sound. It is significant that the two marks are not mere transpositions of exactly the same two elements (i.e., they are not ATOM DATA and DATA ATOM).  “[T]he reversal in one mark of the essential elements of another mark may serve as a basis for a finding of no likelihood of confusion only if the transposed marks create distinctly different commercial impressions.” In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (RUST BUSTER for rust-penetrating spray lubricant found to be confusingly similar to BUST RUST for penetrating oil because both marks were “likely to be perceived by purchasers as signifying that the product sold thereunder busts through, or breaks up, rust.”). The Board found that ATOMIC DATA and DATA ATOM convey similar meanings and this similarity outweighed any dissimilarity in sight and sound between the marks caused by reversing words.

As searchers, what can we learn from this case?

First, it is important to search broad goods and services descriptions because the narrower aspect of your goods or services may cause you to miss and otherwise important registered mark or pending application.

Second, use the $ Wild Card search when searching. Searching for DATA ATOM would not return the ATOMIC DATA registration. But searching for $ATOM$ would have found the ATOMIC DATA registration because the $ tells BOB to look for words on either side of the word you are searching.