Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, to cause mistake, or to deceive. 15 U.S.C. § 1052(d). Likelihood of confusion under Section 2(d) is based on the factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”).

Two key factors are the similarity or dissimilarity of (1) the marks and (2) the services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”).

ACRON mark

The Trademark Trial and Appeal Board recently reversed a Section 2(d) refusal against the ACRON mark for “Gardening; landscape gardening; horticulture services; aerial and surface spreading of fertilizers and other agricultural chemicals; plant nursery services” in International Class 44. In re Public Joint Stock Company Acron, Ser. No. 79301495 (TTAB Aug. 4, 2022). The application had been refused under Section 2(d) based on a prior registration of the ACRON mark for “Construction, namely construction consultancy, construction planning” in International Class 37.

The TTAB focused on the second DuPont factor, namely the nature of the goods or services. The services need only be related in some manner, and need not be identical or even competitive to find a likelihood of confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000).

No Direct Relationship Between the Respective Services

Evidence relating to general construction (building) services, and not the specific construction consultancy and construction planning services identified by Registrant's registration, was not enough. See In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002) (“There is little evidence in this record that is clearly relevant to applicant's identified goods and services.”). The TTAB found this evidence did not show a direct relationship between the Applicant's landscape gardening services and the Registrant's construction consultancy services.

Also, two third-party registrations offering construction consultation and landscape gardening services, and the one third-party use offering construction planning and landscape gardening services, was not sufficient to establish a relationship between the respective services. In re Donnay Int'l, Societe Anonyme, 31 USPQ2d 1953, 1955 (TTAB 1994) (two third-party registrations submitted by the Examining Attorney not sufficient to establish that “it is the norm for companies to sell both rackets and soccer balls and to adopt a single product mark for both, or that customers would be aware of such a practice, such that they would assume that the products emanate from the same source if they were sold under the same or similar marks”).

The TTAB held there was insufficient evidence in the record to show that consumers would believe that the services emanate from the same source if they were offered under the same marks. Accordingly, the TTAB reversed the Section 2(d) refusal.

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