Harness IP Principal Lisa DuRoss, with assistance from Of Counsel Paul Hoffer, recently prevailed on appeal before the Trademark Trial and Appeal Board, the Board overturning a refusal to register our client’s service mark application on likelihood of confusion (§ 2(d)) grounds despite trademark identity and overlapping classes. The odds of a favorable outcome were statistically not encouraging; the Board’s affirmance rate in likelihood of confusion refusals was reported to be 92.5% when the appeal was filed, the Board reversing in only 15 of 200 such appeals.

The hurdles are higher when marks are identical. Most § 2(d) refusals are premised on the similarity of the marks and the relatedness of the goods/services, the factors on which the USPTO based the refusal here. If marks are identical, the less similar the goods or services typically have to be to support a likelihood of confusion finding. In our case, the application and the cited registration covered services in the same international class.

Goods and services should not, however, be deemed related simply because they could be described as falling within a broad category or are in the same class. Their dissimilarity can be determinative. The examining attorney must provide probative evidence that they are related to support a likelihood of confusion finding. Where the record is deficient or the evidence is flawed, as was determined in our case, confusion is not likely. The Board reversed despite mark identity, finding that the dissimilarity of the parties’ respective services, their channels of trade, and classes of consumers was dispositive. The case is In re Mark Cachia, Serial No. 88276115.

 

Lisa DuRoss devotes her practice of 39 years exclusively to brand management and trademark and copyright procurement, maintenance, and enforcement. She devises creative yet pragmatic IP asset protection strategies, tenaciously implementing as many legitimate barriers to competitor entry as is feasible.

Paul Hoffer’s decades of experience in trademark law, focusing on clearance, prosecution, enforcement, and brand management, have honed his skills as an effective communicator. His extensive experience and diverse clientele enable him to address the unique needs and concerns of each client with precision and understanding

Since 1921, Harness IP has focused exclusively on patent, trademark, and copyright law, helping our clients succeed in the marketplace and in the courtroom.

 

 

 

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Harness IP is celebrating more than 100 years as an intellectual property law firm. Founded in 1921, the firm currently holds a No. 2 ranking from IAM Media for providing counsel to 44 companies with the largest portfolios of issued U.S. patents. The firm also ranks No. 6 for filing the most patent applications on behalf of those companies. Harness IP’s attorneys and IP professionals focus exclusively on patents, trademarks, global IP management, litigation and other IP rights. The firm has offices in metropolitan Dallas, Detroit, St. Louis, and Washington, D.C. Visit www.harnessip.com for more information.