The USPTO refused to register the mark shown below left, for "retail store services featuring furniture, furniture paint and finishes, clothing, fashion accessories such as scarves, hats, shoes, rings, necklaces, and earrings, and vintage items" [VINTAGE MARKET disclaimed], finding it likely to cause confusion with the registered mark shown below right, for legally identical retail store services. How do you think this appeal came out? In re Minegar, Serial No. 86179013 (May 23, 2016) [not precedential].
Click here to view the image.
Because the services overlap, the Board must presume, "at least with respect to the overlapping services, that the channels of trade and classes of purchasers are the same."
Relying on Juice Generation and Jack Wolfskin, applicant argued that "IDEA" is a weak formative and that consumers will recognize subtle differences between the marks due to the number and nature of similar marks on similar goods. Applicant submitted four dozen use-based registrations for IDEA-formative marks, owned by different registrants, for goods and services related to the services involved here. Applicant also provided evidence of five websites whose domain names include the word "idea," for retail services featuring furniture and clothing.
The Board sided with applicant:
Based on this evidence, we agree that the term “IDEA” and its plural “IDEAS” are used and registered by third parties in the relevant industry of retail furniture and clothing to such an extent that the public has been exposed to the terms and will look to other distinguishing aspects of Applicant’s mark. As our primary reviewing Court has noted, “extensive evidence of third-party use and registrations is ‘powerful on its face.’” quoting Jack Wolfskin, 116 USPQ2d at 1136.
Comparing the marks in their entireties, the Board noted that when the services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.
We note, nevertheless, that the marks have significant differences in sight, sound, and commercial impression. Although the marks share the term “IDEAS,” as noted above, we have found the shared term to be weak. Furthermore, Applicant’s mark contains additional wording and each mark includes a distinctive, eye-catching design.
Applicant's mark gives the impression of "light or bright ideas" for products sold in a “vintage market,” whereas the cited mark engenders no such impression, and offers a geometrical design.
The found that the marks "differ significantly in terms of appearance, sound, meaning and commercial impression."
Balancing the relevant du Pont factors, the Board concluded that the marks are not confusingly similar, and so it reversed the refusal.