By James Juo.

When faced with a Section 2(d) refusal to register a mark in view of a pre-existing registration, one possible response is to argue there is no likelihood of confusion because the marks are weak based on third-party registrations and uses.

The case of In re Garan Services Corp., Serial No. 88674888 (TTAB Nov. 3, 2021) presents one such example. The application sought to register the MATCH STUDIO mark (which disclaimed exclusive right to use the word “Studio”) for “clothing, namely, tops and bottoms,” in International Class 25.

The Examining Attorney refused to register the MATCH STUDIO mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of the mark MATCH (Reg. No. 4808154) for “Clothing and accessories for babies, adults, children, women and men, …”

The dictionary definition of “match” was established based on the entry from the MERRIAM-WEBSTER DICTIONARY defining “match” as “a pair suitably associated // carpet and curtains are a match,” and “to harmonize with // the jacket matched the pants.”

The Applicant submitted fifty-five third-party registrations consisting, in part, of the word “match” for clothing products. Twenty of the registrations issued before registration of the cited MATCH mark. The TTAB noted:

“Third party registrations are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015). In addition to the dictionary definition of “match” made of record, the above-recited registered marks indicate that the term MATCH is highly suggestive in connection with clothing products.

The TTAB discussed Plus Prods. v. Natural Organics, Inc., 204 USPQ 773 (TTAB 1979), which involved an opposition to the registration of NATURE'S PLUS for vitamins by the owner of the mark PLUS, also for vitamins, where the applicant made of record eight third-party registrations that issued prior to opposer's registration and seven registrations that issued after; where the TTAB  had concluded “that various PLUS marks can be used and registered side by side without causing confusion provided there are minimal differences between the marks.” Id. at 779; see also In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153 (TTAB 2012) (“Because of the highly suggestive nature of the term ‘Grand Hotel,' … the same inferences apply.”); Jerrold Elec. Corp. v. Magnavox Co., 199 USPQ 751, 758 (TTAB 1978) (third-party registrations “reflect a belief, at least by the registrants, who would be most concerned about avoiding confusion and mistake, that various ‘STAR' marks can coexist provided that there is a difference.”); In re Sien Equip. Co., 189 USPQ 586, 588 (TTAB 1975) (the suggestive meaning of the word “Brute” explains the numerous third-party registrations incorporating that word with other wording or material no matter how little additional significance they may add to the word “Brute” per se).

The Applicant also submitted excerpts from more than a dozen websites that used the word “match” as part of a trademark in connection with the sale of clothing, to show that others in the clothing field consider the word “match” to have a highly suggestive significance when applied to clothing.  See In re FabFitFun, 127 USPQ2d 1670, 1674 (TTAB 2018) (“‘Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection'” (quoting Palm Bay Imps., Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).

The TTAB also found that these third-party websites showed that others in the clothing field consider the word “match” to have a highly suggestive significance when applied to clothing (i.e., that clothing products should complement or enhance each other).

Under these circumstances, based on the evidence of record, we accord marks consisting, in whole or in part, of the word “match” in connection with clothing a narrow scope of protection. Such marks, inherently, are highly suggestive; in the marketplace, such marks travel in a crowded field. In other words, Registrant's MATCH marks are not entitled to such a broad scope of protection that they will bar the registration of every mark comprising, in whole or in part, the word “match”; …

The TTAB also disagreed with the Examining Attorney's assertions that “match” is the dominant part of Applicant's mark because Applicant disclaimed the exclusive right to use the word “studio” and because “match” is the first word in Applicant's mark and, therefore, more likely to be remembered by consumers. Reiterating that “[t]here is no mechanical test to select the dominant element of a mark.” Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059 (TTAB 2017), the TTAB concluded that, because of the highly suggestive nature of the word “match,” there is no rational reason for giving it more weight than the word “studio.” And a disclaimer does not remove the disclaimed portion from the mark for the purposes of comparing marks in a likelihood of confusion determination. See Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 85 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Nat'l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).

Because “match” is highly suggestive as applied to clothing, and is used by many third parties for clothing, the TTAB concluded that the addition of the word “studio” to Applicant's mark suffices to distinguish the two marks when considered in their entireties. See Jack Wolfskin Aurustung Fur Draussen GmbH & Co. v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1131 (Fed. Cir. 2015) (“[T]he Board incorrectly found a likelihood of confusion between the two marks because the Board failed to properly compare New Millennium's mark [KELME and paw print design] as a whole to Jack Wolfskin's mark [a paw print design] and also failed to recognize, in light of the significant evidence of paw prints appearing in third-party registrations and usage for clothing, the relatively narrow scope of protection afforded to marks involving paw prints.”); Conde Nast Publ'n, Inc. v. Miss Quality, Inc., 597 F.2d 1404, 184 USPQ 422 (CCPA 1975) (COUNTRY VOGUES for dresses not likely to be confused with VOGUE for magazines; purchasers likely to view VOGUES in its normal suggestive sense as applied to such goods); Knight Textile Corp. v. Jones Inv. Co., Inc., 75 USPQ2d 1313 (TTAB 2005) (NORTONMCNAUGHTON ESSENTIALS is not similar to ESSENTIALS because of the weakness of the term “essentials”); Kayser-Roth Corp. v. Morris & Co., Inc., 164 USPQ 153 (TTAB 1969) (PAUL JONES ESQUIRE and ESQUIRE not likely to be confused as applied to men's clothing).

Thus, the TTAB reversed the refusal to register the MATCH STUDIO mark.

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.