There haven't been many 2(d) reversals lately, but here's one. The Board overturned a refusal to register FAVORIT in the stylized form shown below, for bicycles, bicycle parts, games, toys, and cycling-related sporting goods, finding the mark not likely to cause confusion with the mark FAVORITES, registered for "mail order catalogs featuring jewelry, hardware, sporting goods, toys and games, food and home furnishings, ...." The weakness of the mark FAVORITES and the differences in the involved goods and services brought turned the tide in applicant's favor. In re Favorit Czechoslovakia s.r.o., Serial No. 79133133 (April 22, 2016) [not precedential].
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The marks: The Board wasted little time in finding the marks to be similar in appearance, sound, connotation, and commercial impression. However, twenty third-party registrations and uses of the terms "favorite" or "favorites" in connection with sporting goods, toys, games,and retail store services selling toys or bicycles convinced the Board that FAVORITES is a "weak source indicator for sporting goods and toys."
That is, the word "favorite" may be considered laudatory, and therefore conceptually weak, inasmuch as "favorite" is defined as "a person or a thing that is liked more than others."
Therefore, this duPont factor (the strength of the mark) weighed against a finding of likely confusion.
Goods/Services: The examining attorney argued that catalogs and the goods contained therein are of a kind that may emanate from a single source under the same mark. She also relied on ten third-party registrations to show the relatedness of applicant's goods and the goods that are listed in connection with the catalogs of the cited registration. However, none of these third-party registrations showed use of the same mark on mail order catalogs and cycling-related sporting goods or on toys and games. Thus these registrations failed to show a connection between applicant's goods and registrant's goods.
Channels of Trade: As to channels of trade, the examining attorney asserted that applicant's goods fall within the broad wording of "sporting goods" or "toys and games" and therefore are closely related and presumably travel in the same channels of trade. Not so fast, said the Board. The goods in the cited registration are mail order catalogs and therefore registrant's channels of trade "do not include, for example, retail stores, the channels of trade in which applicant's goods are likely to be sold." Nor could the Board assume that applicant's goods would be sold through registrant's catalogs. Therefore, the Board concluded that the PTO had failed to show the channels of trade were the same for applicant's and registrant's goods.
The Board concluded that confusion was not likely, and it reversed the refusal.