Marks That Are Opposites Sometimes Attract Refusal Of Registration

• Published date: 23 December 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: BakerHostetler
• Author: Mr Robert B.G. Horowitz

When considering a likelihood of confusion, one might naturally think a mark is registrable that is an antonym (opposite) of a registered mark. This was not the result in In re Sugar Free Specialties, LLC, Serial No. 90706411 (TTAB Dec. 7, 2022) (not precedential).

In Sugar Free Specialties, the applicant sought registration of "SMALL WINS" for "sweets and candies, namely, gummies and soft candies." A United States Patent and Trademark Office (USPTO) examining attorney cited a registration for "BIG WIN" for "candy" because of confusing similarity. The applicant appealed and suffered a big, not small, loss.

Applying the customary DuPont likelihood of confusion factors, the Trademark Trial and Appeal Board (Board) found the goods were legally identical and presumed they traveled in the same channels of trade to the same potential customers. Id. at 4-5. It also found that a lesser standard of purchasing care would be exercised by buyers due to the low cost of the goods. Id. at 18-19.

The bulk of the Board's analysis was spent on the DuPont factor of the similarity/dissimilarity of the marks. Its first consideration was whether the cited BIG WIN mark was conceptually strong. With no evidence provided on the point, the Board gave the BIG WIN mark "the typical scope of protection accorded a mark registered on the Principal Register pursuant to Trademark Act Section 7(b), 15 U.S.C. ' 1057(b)". Id. at 6-7.

The Board next compared the marks. It began with the customary statement that marks are considered in their entireties, including their appearance, sound, meaning and commercial impression, with similarity in one element being sufficient to find a likelihood of confusion. Id. at 7. The Board also noted that where the goods of an applicant and registrant are identical, "the degree of similarity between the marks requiring to support a finding [of] confusion is likely declines." Id. at 7-8. It also stated that "more or less weight may be given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties." Id. at 9.

The Board next considered the sound and appearance of the marks. While they sounded different, the Board found them to have "the same format, structure, and syntax" and that the marks were not materially different due to their cadences and intonations. They consequently were "more similar than they are different in appearance and sound." Id. at 10-11.

The marks' meaning and commercial...