Trademarks with multiple definitions, one of which overlaps with an existing trademark registration can be problematic.

Applicant applied to register TECHWOOL for socks made of wool. The TTAB denied registration claiming Applicant’s mark was likely to be confused with an existing trademark registration for TECHNOWOOL for jackets made of wool.

This case touches on two fundamental trademark concepts.

FIRST: Most of the time, the TTAB will find that one specific clothing/headgear/footwear item is legally related to another type of clothing/headgear/footwear item. In this case, the goods were almost guaranteed to be related because each mark suggested the products were each made of wool.

SECOND: Overlapping connotations can be determinative. In this case, the Applicant argued the connotation of the “TECH” portion of its mark was “technical” in that Applicant had managed to incorporate a technical advantage into the product. The Applicant also argued that the “TECHNO” portion of the cited registration was musical in nature (i.e., “techno” as a type of music).

While acknowledging that “techno” is indeed a type of music, the TTAB also noted that an alternative connotation for the “TECHNO” portion of the cited registration was “technological” in that the products had somehow incorporated a technological improvement into the goods contained in the registration.

Accordingly, a “technical” or “technological” improvement was essentially the same connotation. Therefore likelihood of confusion was found and registration was denied.

Image Courtesy of: Marja van Bochove Used under Creative Commons license.

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