In a likelihood of confusion analysis under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), two key DuPont factors are the similarity or dissimilarity of the marks and the goods or 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.”).

With respect to the similarity or dissimilarity of the marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression' such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).

Furthermore, the marks “must be considered … in light of the fallibility of memory ….” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quotation omitted). See also Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 (TTAB 2004). (“The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.”). “Similarity is not a binary factor but is a matter of degree.” St. Helena Hosp., 113 USPQ2d at 1085 (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003)).

THE CHIRO PLACE Trademark Application

The Chiro Place, Inc. (“Applicant”) filed a trademark application to register the mark THE CHIRO PLACE for “Chiropractic services; Chiropractics; Providing information relating to chiropractics,” in Class 44.

The Trademark Examining Attorney refused registration of the mark under Section 2(d) in view of an existing THE CHIRO SPOT registration for “Chiropractic services,” in Class 44.

TTAB Appeal

On appeal, the Trademark Trial and Appeal Board (“TTAB”) found the claimed “chiropractic services” to be closely related, which favored finding a likelihood of confusion. In re The Chiro Place, Inc., Ser. No. 90119392 (TTAB Sept. 20, 2022). Because the services were so closely related, the TTAB also presumed that the channels of trade overlapped.

With respect to the marks themselves, the term “chiro” was disclaimed in both the cited THE CHIRO SPOT registration and the THE CHIRO PLACE application. The record also showed third-party “chiro”-formative registrations which showed that such marks could be registered if there are sufficient differences. See In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012) (seven registrations incorporating Grand Hotel show that the Patent Office views the marks “as being sufficiently different from the cited registrant's mark, and from each other, such as not to cause confusion” and “we presume that the owner of the cited registration did not have a problem with the registration of these third-party marks, as they all issued after the registration of the cited registrant's registration without challenge by the registrant”).

In addition, The TTAB noted that the definite article “THE” in Registrant's mark is nondistinctive. See In re The Place, Inc., 76 USPQ2d 1467, 1468 (TTAB 2005) (“the” is not distinctive).

As for the term “spot,” the TTAB found it to be “a highly suggestive reference to the place, location, or area where Registrant's services are performed.”

Mark as a Whole Was Highly Suggestive

Thus, the cited THE CHIRO SPOT mark “as a whole is highly suggestive of the place or area where chiropractic services are performed, is conceptually weak, and is entitled to a narrower scope of protection.”

          The dominant portion of Applicant's and Registrant's marks are the terms “place” and “spot” because THE CHIRO in both marks lack source indicating significance, with “chiro” as a descriptive or generic term, disclaimed by both Applicant and the Registrant, and the definite article “the” being non-distinctive.

          Although the terms PLACE and SPOT are not similar in appearance and sound, they appear in the same position in each mark (i.e., as the third and final term after THE CHIRO) and are highly similar in connotation. “Place” is defined as “a space, area or spot set apart or used for a particular purpose” while “spot” is defined as “the particular place where someone or something is.”  Each term is used to define the other. Due to the similar connotations of PLACE and SPOT, the marks THE CHIRO PLACE and THE CHIRO SPOT in their entireties have similar commercial impressions. We find the marks in their entireties are more similar than dissimilar.

Thus, the TTAB also found that the DuPont factor of the similarity of the marks favors a finding of likelihood of confusion.

Thousand Miles Apart, with No Actual Confusion

The Applicant also argued that the two businesses were “not in competition with each other, are separated by thousands of miles, and operate in two entirely different markets,” where both businesses have been in operation since approximately 2015 “with no reported actual confusion.” The cited mark was used in the Denver area while the applied-for mark was used in Tennessee and Mississippi.

      However, “[t]he lack of evidence of actual confusion carries little weight, especially in an ex parte context.” In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (internal citations omitted). Further, “the absence of evidence of actual confusion, under the seventh DuPont factor, by itself is entitled to little weight in our likelihood of confusion analysis unless there also is evidence, under the eighth DuPont factor, that there has been a significant opportunity for actual confusion to have occurred.” See In re Ass'n of the U.S. Army, 85 USPQ2d 1264, 1273 (TTAB 2007) (citations omitted). See also In re Guild Mortg. Co., 2020 USPQ2d 10279, at *6 (TTAB 2020) (“The eighth du Pont factor, by contrast . . . requires us to look at actual market conditions, to the extent there is evidence of such conditions of record.”).

Because respective marks are used in geographic areas that do not overlap, this suggests that their respective consumers have not had an opportunity to encounter each other's services and vice versa. Thus, the TTAB found the argument regarding the lack of actual confusion to be unpersuasive, and the DuPont factors regarding actual confusion to be neutral.

Refusal Affirmed

The TTAB affirmed the refusal, noting that the cited mark was inherently weak and thus has a limited scope of protection, but also bearing in mind that even weak marks are entitled to protection against confusion. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993). (“Doubt is resolved against the newcomer”).

Until THE CHIRO SPOT begins offering chiropractic services in the Mid-South region, however, THE CHIRO PLACE likely will not be forced to change its name under the Dawn Donut rule. Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358 (2nd Cir. 1959) (“if the use of the marks by the registrant and the unauthorized user are confined to geographically separate markets, with no likelihood that the registrant will expand his use into the defendant's market, so that no public confusion is possible, then the registrant is not entitled to enjoin the junior user's use of the mark.”).

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