The Trademark Trial and Appeal Board relied on evidence in the real world marketplace to conclude that video conferencing is a related service to the electronic transition of messages like e-mail. This decision is a good reminder that intuition about whether certain goods or services are related can lead to wrong decisions.
InFocus Corporation filed a service mark application to register the mark INFOCUS (Stylized) for “video conferencing services, namely, providing cloud-based telecommunications connections between video conferencing systems for video calling” in International Class 38. The Trademark Office refused registration of the mark on the ground that it was likely to cause confusion with a prior registered mark for INFOCUS MARKETING (in standard characters with MARKETING disclaimed) for direct mail and e-mail marketing services.
The Trademark Trial and Appeal Board found the marks at issue were similar to both contained the dominant word INFOCUS and the rights in the cited mark extended to all forms of stylization of the word INFOCUS. The similarity of marks factor favored a finding of confusion.
As for the relatedness of the services, the Trademark Office offered 15 third-party websites that promoted video conferencing and some type of electronic messaging such as e-mail, text, or instant messaging. In a majority of these websites, the messaging feature is ancillary to the primary services, which is video conferencing. Nevertheless, because InFocus Corporation made the mistake of not petitioning to partially cancel the INFOCUS MARKETING registration to narrow the identification of services description to e-mail as part of a marketing campaign, the Board considered all forms of electronic messaging whether ancillary to a primary service or not.
When the marks at issue are identical, trademark searchers need to take a closer look at goods or services their intuition is telling them may not be related. We know that when marks are identical, less relatedness between the goods or services at issue is required in order to create a likelihood of confusion. Looking at prior decisions and paying attention to what any competitors are offering should be considered.