Okay, this sounds rather straightforward doesn't it? The services are identical: retail furniture stores. Therefore a lesser degree of similarity between the marks is needed to support a finding of likely confusion. The marks FURNITURE BOBS and BOB'S DISCOUNT FURNITURE are not to be considered side-by-side, but rather as if encountered separately. Registrant disclaimed DISCOUNT FURNITURE, and the word FURNITURE in applicant's mark is surely descriptive. But what about third-party uses and registrations of BOB and FURNITURE? In re Horizon Merchant, Inc., Serial No. 86736229 (July l0, 2017) [not precedential] (Opinion by Judge Jyll Taylor).
Applicant maintained that the cited mark BOB'S DISCOUNT FURNITURE is very weak when considered in the light of third-party registrations and uses of marks in the furniture industry, which evidence shows that consumers are able to distinguish these businesses on the basis of small differences between the marks.
The Board found, however, that the 29 registrations cited by applicant, that contained variants of "Bob" (including Robert and Roberta), were of little probative value because the two marks at issue here are much closer to each other than the third-party registered marks. The three dozen third-party uses, however, were more interesting.
Of the third-party uses, eleven included both "Bob" or "Bob's" and "Furniture." Of those, six included additional terms that distinguished the marks and altered their commercial impressions: BOB’S FURNITURE & BEDDING, BOB’S FURNITURE REPAIR SERVICE, BOB’S FURNITURE & AUCTION, BOB MILLS FURNITURE, BOB’S FURNITURE HOSPITAL and BOB LOFTIS FURNITURE. [Five of them seem pretty relevant to me - ed.].
The remaining five uses - BOB’S FURNITURE, BOB’S NEW & USED FURNITURE, BOB’S FURNITURE OUTLET, BOB’S FURNITURE AND BOB’S FAMILY FURNITURE - "do not evidence such a widespread and significant use of the terms 'BOB'S' and "FURNITURE' in the furniture industry that we can conclude that the cited mark is so weak that the public would be able to distinguish the source of Applicant's services from those of Registrant by the slight differences in their respective marks."
The Board noted that in Jack Wolfskin there were at least 14 relevant third-party uses and registrations, and in Juice Generation there were 26.
The Board recognized that there is a "certain degree of weakness in the cited mark, but even weak marks are entitled to protection against similar marks for identical goods and/or services.
And so the Board found confusion likely and it affirmed the refusal.