United States: TTABlog Test: Are these two “MW” design marks similar for metal fabrication services?
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The USPTO refused to register the trademark shown below left, for “Metal fabrication and finishing services for others; Machine shop services, namely, machining parts for others”, finding probable confusion with the registered trademark shown below right for, among others, “Treatment of materials, namely treatment of metals; » « treatment and transformation of metal; and “Rental of machines and machine tools for milling, grinding and metal processing”. The Commission concluded that the services concerned were partly identical, but what about the notes? The look quite different to me. In re Truth Partners LLC, dba Mid State Manufacturingserial no. 88944166 (March 29, 2022) [not
precedential] (Opinion of Judge Frances S. Wolfson).
The board found that the marks were “fairly similar” in terms of appearance, sound, connotation and commercial impression. “The only recognizable distinction between the marks is the different stylization of the identical lettering and the different background designs surrounding and incorporating the letters MW. These distinctions do not serve to produce a material difference between them.”
The Board concluded that the letters MW constituted the dominant part of each mark. First, MW is the only pronounceable part of the marks. Second, the literal “is more likely than the design features to be etched in the buyer’s memory and to be” used by consumers to request the goods [or
services]. “Third, the stylization of the lettering” is not so unique or unusual that it adds significant distinctiveness to either mark. “And fourth, the circular and hexagonal design elements of the brands are ordinary geometric shapes that serve as a simple background for the lettering.
Contrary to Applicant’s argument, the fact that the letters MW are visually incorporated into the overall design of each mark does not make the marks distinct. “The proper test is not a side-by-side comparison of the marks, but rather whether the marks are sufficiently similar in terms of commercial impression that persons encountering the marks are likely to assume a connection between the parties.”
The applicant reported “numerous” applications and registrations in Class 40 for MW formative marks for purportedly similar goods and services. However, the Commission stressed that the applications are only proof that they have been filed. The recordings have little probative value as to commercial strength, with no evidence that the marks “are in use on a commercial scale or that the public has become familiar with them”. The records are relevant to the inherent or conceptual strength of a term “because they are probative as to how the terms are used in connection with the goods or services identified in the records”. Here, however, the services indicated in the third-party recordings were unrelated to the plaintiff’s services and therefore had no probative value.
Finally, the board observed that “arbitrary arrangements of letters generally benefit from a wide scope of protection because they are more difficult to remember than word marks. Thus, where multi-letter marks are similar, the difficulty of memorizing them makes confusion between them more likely.”
And so, the Board upheld the denial of registration.
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