Applicant filed for a trademark application for ENDORPHINS for “hats; sweatshirts; t-shirts; tank tops.” (Seriously,…does anyone wear tank tops anymore?)
The application was rejected based on U.S. Trademark Registration No. 3927040 for the mark shown below:
for a variety of clothing items including hats and t-shirts. The TTAB affirmed the refusal.
While this is a fairly straight forward and simple case, it does touch on several key issues often raised in a typical TTAB Likelihood of Confusion decision. Specifically:
(1) The decision reminds trademark owners that often the two most common/important Likelihood of Confusion factors are similarity of the goods/services and the similarity of the marks.
(2) When engaging in a standard Likelihood of Confusion analysis, the TTAB will often start with the similarity of the goods/services. This is so because if the respective goods are not held to be identical or related, the analysis is essentially complete and there is no compelling reason to seriously compare the marks (e.g., after all, UNITED for household moving services and UNITED for the operation of an airline co-exist perfectly fine because the services are legally unrelated). In this case, hats and T-shirts were listed in both the application and the cited registrations. Accordingly, the TTAB held that at least some of the respective goods were identical.
(3) The identical overlap of even one good in the respective application/registration in the same International Class can be sufficient to support a finding of a likelihood of confusion. As indicated above, in this case, both the application and the cited registration contained hats and T-shirts.
(4) Often times, the likelihood of confusion analysis compares a word mark (i.e., ENDORPHINS) to a mark that combines a word with a design element (i.e., see mark above incorporating the word “endorphin,” all in lower case letters). When the TTAB assesses a design and word mark combination, the TTAB usually deems the word portion of the mark to be dominant. That is what unsurprisingly occurred in this case.
(5) When the respective goods are identical (i.e., as in this case) or highly similar/related, the differences between the respective marks can be greater than if the goods were not identical, when finding a likelihood of confusion.
(6) While evidence of Third Party use can be used to show that the subject mark of a cited registration is weak, and thus entitled to a limited scope of protection, the TTAB often concludes that Third-Party registrations (i.e., in this case incorporating variations of “endorphin”) are of limited value because they are not evidence of use of the marks in commerce OR that the public is familiar with the subject marks of the cited registrations.
(7) Also, the TTAB often holds that Third-Party registrations cannot assist an Applicant in registering a mark that is likely to cause confusion with a registered mark.