In the post on likelihood of confusion, the Dupont Factors were discussed. Though there are nine factors, not all of them are relevant or applicable in every case. The first two factors are the most important across the board. After taking them into consideration, an examining attorney will look to the remaining factors in order to support a finding of likelihood of confusion. If there is enough evidence to support such a finding, a mark may be deemed unregistrable with the USPTO under §2(d) of the Lanham Act. The following is a case that was taken before the Trademark Trial and Appeal Board on the grounds of likelihood of confusion.

In a 2020 non-precedential decision, the Trademark Trial and Appeal Board affirmed the refusal for registration for the mark HARDROK EQUIPMENT INC. for “distributorship services in the field of industrial machinery and parts therefor in the mineral and aggregate industries” (EQUIPMENT INC. disclaimed). The Board found confusion to be likely with the previously registered mark HARDROCK for “rock drills, drill bits, and other drilling equipment.” Turning to the first factor in the Dupont Factors, the Board found that the two marks are “quite similar in appearance, sound, and connotation and commercial impression when considered in their entireties.” In that manner, the first factor was satisfied. The second factor, relating to the relatedness of the goods and services, is examined based on what was described in the registration and application. The Board concluded that even though the applicant and the cited registered mark owner did not have identical goods, “they substantially overlap, which weighs in favor of finding a likelihood of confusion.” Therefore, the second factor was satisfied. The applicant then cited the fourth factor: The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. In this case, the fourth factor supported a finding that confusion was not likely, however, the first two factors are the most heavily considered. Simply because other factors may be relevant or applicable, does not mean they outweigh the first two. In summation, the Board found that “[s]ophistication of buyers and purchaser care are relevant considerations but are not controlling on this factual record.” So, the Board affirmed the §2(d) refusal for registration.

The previous post discussed generic marks, which are the weakest type of mark on the Spectrum of Distinctiveness. Generic marks are not registrable on either the Principal Register or the Supplemental Register. A mark is considered generic if the mark is comprised wholly, or partially of a term(s) that the public primarily associates with a genus of goods or services.

Below, are two recent Trademark Trial and Appeal Board decisions affirming refusal for registration under §§ 2(e)(1) and 2(f) of the Lanham Act:

In a 2019 precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the generic mark MALAI, for ice cream. The Board ultimately found that the relevant public would understand the term MALAI to refer to a critical part of “ice cream, gelato, dairy-free ice cream, frozen yogurt, frozen desserts, ice cream sandwiches, sorbet, freezer pops and ice cream sundaes.” The Board applied the two-part inquiry set forth in H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F .2d at 990, 228 USPQ at 530 (Fed. Cir. 1986) to determine whether or not a mark is generic. For the first part of the inquiry, asking what the genus of the goods or service at hand is, there was no argument that the applicant’s identification of his goods satisfied this prong. In this case, the relevant consuming public consists of ordinary consumers who eat and purchase ice cream and equivalent products. The Board then looked at the second prong of the inquiry that asks how the relevant public perceives the term MALAI in the context of the applicant’s goods. Supporting evidence for genericness, included a dictionary definition of the term and a Wikipedia entry for “Ras Malai” as a kind of dessert as well as several articles, recipes and internet materials that identified the term as a cream.  Both pieces of evidence showed that the word MALAI “is commonly used in the English language as a genus of rich, high-fat creams commonly used in Indian and South Asian culinary dishes, especially dishes with a sweet taste.” The Board agreed with the examining attorney that the evidence showed that “malai” has its own English meaning for cream as a cooking ingredient. The Board agreed that there is no hard-and-fast rule the name of any ingredient in a product would be considered generic, but in this specific case, the public comprehends the ingredient name “to refer to a key aspect or sub-category of the genus of the goods, it is generic for those goods;” see Royal Crown, 127 USPQ2d at 1046; see also In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017). In light of this, the Board affirmed the refusal to register on the Supplemental Register under §23 of the Lanham Act.

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the generic mark FIDGET CUBE on the Supplemental Register, for “stress relief exercise toys.” (Note that FIDGET was previously disclaimed.) The Board found that the term was a “generic name of the subgenus or subcategory of Applicant’s identified goods.” As a main defense, the applicant argued that he was the first user of the term FIDGET CUBE. However, the fact that no third-party registrant had used the term, does not negate a finding of genericness. The examining attorney submitted dictionary definitions of equivalent words, third-party registrations disclaiming “fidget,” and Internet product reviews, online retailer advertisements and online articles referring to “fidget cubes.” The Board remarked that there was no ban on evidence taken from Internet forums or blogs. The Board then turned to evidence that showed the term FIDGET CUBE generic for a type of stress-relieving toy. In a final, and unconvincing, argument, the applicant attempted to argue that there were other names for the type of product, including terms such as “fidget dice, infinity cube, fidget box, stress cube, stress block and dodecahedron.” In light of these alternative names, the applicant rationalized that there was no need for competitors to use the term FIDGET CUBE to describe their products. The Board was quick to remind the applicant that there can be more than one generic term for a particular genus of goods or services. In summation, the Trademark Trial and Appeal Board affirmed the refusal to register under §23 and §45 of the Lanham Act.

Generic marks may not be registered on the Principal Register or the Supplemental Register in any case. If the mark is comprised wholly, or in part, by generic material, where the generic term(s) retain significance to the relevant public, the mark is generic. When conducting the two-part inquiry, an examining attorney must look at the mark as a whole. Unlike other marks on the Spectrum of Distinctiveness, generic marks cannot acquire distinctiveness, nor can an applicant argue first use as an immunization against genericness.