Are you free to register the trademark SWAP SEALED WITH A PRAYER when someone else has an existing registration for the mark SWAP, and both are directed to clothing goods? That is a question the Trademark Trial and Appeal Board (the “Board”) sought to answer in the matter of In re Beda Alan Tirol. In particular, the Board examined whether there would be a likelihood of confusion for the mark SWAP SEALED WITH A PRAYER based on the existing SWAP mark. As discussed in this post, the Board concluded there is a likelihood of confusion and refused to register the mark SWAP SEALED WITH A PRAYER.
To examine whether the marks are confusingly similar, the Board applied the familiar test of considering the sound, appearance, mean and commercial impression of the marks in their entireties. Here, because the marks are directed to identical goods, less similarity between the marks is needed for there to be a likelihood of confusion.
The Board began by noting that mark SWAP SEALED WITH A PRAYER includes the entire registered mark SWAP with an additional phrase. According to the Board, the addition of a term or phrase to a registered mark generally does not “overcome a likelihood of confusion.”
The Board further found that the word “SWAP” is the dominant portion of the mark because “SWAP” is an acronym for the phrase “SEALED WITH A PRAYER” and because “purchasers are generally inclined to focus on the first word or portion in a trademark.” Because the first letter in each word of the phrase spells out S-W-A-P, the Board found that the phrase reinforces the dominant impression the word SWAP makes on purchasers.
Conversely, Ms. Tirol argued that her mark SWAP SEALED WITH A PRAYER creates a different commercial impression than SWAP. Ms. Tirol claimed that her mark creates a distinct religious overtone, whereas the registered mark SWAP merely creates a connotation to exchange or barter. Further, the registered mark SWAP, which is used commercially as the acronym “Shirts With A Purpose” (with the website www.shirtswithapurpose.com), is used to support political platforms, such as marijuana reform.
Ms. Tirol also contended that the use of the S-W-A-P acronym in her mark weighed against a likelihood of confusion because consumers would understand that SWAP is used to reinforce the religious wording for which it stands (SEALED WITH A PRAYER).
The Board rejected these arguments, finding that divergent meaning between the marks is not apparent in the marks themselves. Even if consumers viewed Ms. Tirol’s mark as an abbreviation for anything, they could attribute the same meaning to the registered SWAP mark, as simply a shortened version of the mark SWAP SEALED WITH A PRAYER.
Further, the Board is precluded from considering the registered mark as an acronym for the phrase “Shirts With A Purpose” because it is not part of the registered mark. In contrast to infringement actions where a court examines the appearance of the marks in the context of their actual use, only the drawings of the marks are relevant in trademark proceedings before the Board.
Accordingly, the Board found that the mark SWAP SEALED WITH A PRAYER when used for clothing is likely to cause a likelihood of confusion with the mark SWAP, and affirmed refusal to register.
The proceeding is Serial No. 86268590 (April 4, 2016).