Third-party registration and use of the word "paper" in connection with digital writing devices led the Board to reverse a Section 2(d) refusal of the mark PAPER for software for writing on electronic devices with a stylus or finger. The USPTO had deemed the mark confusable with the registered mark shown below, for input devices for computers, including computer software for digital drawing and painting. In re FiftyThree, Inc., Serial No. 86180291 (April 12, 2017) [not precedential] (Opinion by Judge Bergsman).
The Goods: The Board concluded that both applicant's application software and registrant's electronic whiteboards and software identify digital notebooks that simulate paper notebooks, and so the goods are in part identical.
The Marks: Applicant submitted evidence of use of marks containing the word PAPER by three third parties for products related to digital notebooks. [Pen and Paper, PAPERLESS DRAW, and ePAPER]. In addition, applicant provided nine third-party, used-based registrations for such mark.
The third-party uses of marks consisting of the word “Paper,” in whole or in part, and the third-party registrations for marks consisting of the word “Paper” in connection with computer applications allowing for the substitution of digital data for writing or drawing on paper are sufficient to prove that the word “Paper” has been extensively adopted, registered and used as a trademark or part of a trademark for computer software or related goods and services of this type. As a result, a mark comprising, in whole or in part, the word “Paper” in connection with such goods or services should be given a restricted scope of protection.
In addition, applicant is the owner of a registration for the mark PAPER BY FIFTYTHREE for the same goods as in the application at issue. The evidence led the Board to conclude that:
● Registrant was satisfied to register its mark BAMBOO PAPER and design side-by-side with all the other PAPER marks by requesting an extension of protection under Section 66 of the Trademark Act, 15 U.S.C. § 1141f; ●The USPTO has been registering PAPER marks for computer software and related services for creating and utilizing digital data so long as there has been some difference between the marks as a whole or between the goods or services; and ● The number of registrations for various PAPER marks reflects a determination by the USPTO that various PAPER marks can be used and registered side-by-side without causing confusion, provided there are minimal differences between the marks and the goods or services.
Considering the marks in their entireties as to appearance, sound, connotation, and commercial impression, the Board concluded that BAMBOO is the prominent element in the cited mark, since "Paper" is a weak term for the involved goods.
The Board noted that registrant uses BAMBOO as a stand-alone mark on its stylus, and also in several BAMBOO-formative marks to identify its products. The Board concluded that "the marks are distinguishable because BAMBOO is the dominant part of Registrant’s mark and Applicant’s mark PAPER is very weak because it is highly suggestive, if not descriptive."
And so the Board reversed the refusal.