Two key factors in Section 2(d) cases are the similarity or dissimilarity of the marks and the goods or services. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017); Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); 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.”).

Third-party registrations can be used in the manner of dictionary definitions to show that a term has some significance in a particular field. See Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976) (even if “there is no evidence of actual use” of third-party registrations, such registrations “may be given some weight to show the meaning of a mark in the same way that dictionaries are used”); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983).

Active third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used in a particular industry that the public will look to other elements to distinguish the source of the services. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (“[E]vidence of third-party registrations is relevant to ‘show the sense in which . . . a mark is used in ordinary parlance.'”). See also In re Ginc UK Ltd., 90 USPQ2d 1472, 1475 (TTAB 2007) (dictionary references and third-party registrations “demonstrate the descriptive/generic significance of ‘togs' and provide further evidence that purchasers would attribute the ordinary dictionary meaning of ‘togs' to applicant's clothing”).

If the matter shared by the two marks is highly suggestive, merely descriptive, or commonly used or registered in the industry for similar goods or services, the addition of a different term to each mark may avoid confusion and distinguish it from the other mark. See In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986) (“The record shows that a large number of marks embodying the words ‘bed and breakfast' are used for similar reservation services, a factor that weighs in favor of the conclusion that BED & BREAKFAST REGISTRY and BED & BREAKFAST INTERNATIONAL are not rendered confusingly similar merely because they share the words ‘bed and breakfast.”); In re Hartz Hotel Servs., Inc., 102 USPQ2d at 1154 (numerous third-party uses of GRAND HOTEL marks for hotel services show that consumers distinguish between these marks even though the only distinguishing element is the addition of a geographic location to the word GRAND HOTEL).

THE PATCH BOYS Mark

The TTAB recently addressed the appeal of a Section 2(d) refusal of the mark THE PATCH BOYS & Design for “Drywall contractor services; General construction contracting,” in view of the registered mark PATCHMAN, in standard character and logo form, for “Building construction, remodeling and repair; Building maintenance and repair.” In re Patch Boys Int'l LLC, Ser. No. 90242361 (TTAB Mar. 9, 2023).

The dictionary definition for PATCH was defined as “a piece of material used to mend or cover a hole or spot.”

Consistent with the dictionary definition, the Applicant submitted third-party registrations that demonstrated the highly descriptive significance of the term PATCH as used in connection with drywall contracting and drywall repair services and related goods.

The Applicant also submitted third-party use evidence of PATCH-formative marks or trade names used in connection with construction services to show commercial weakness. In re i.am.symbolic, LLC, 123 USPQ2d at 1751 (“third-party use bears on strength or weakness” of mark); Tao Licensing LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1057 (TTAB 2017) (considering United States third-party use (webpages) of “TAO-formative names” in connection with restaurant services and alcoholic beverages as evidence of commercial weakness of TAO under the sixth DuPont factor). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (the purpose of a defendant introducing third-party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers ‘have been educated to distinguish between different such marks on the bases of minute distinctions.'” (citation omitted)).

As for the “man” in the PATCHMAN mark, the TTAB found that it was highly suggestive of the person who is performing the services, and hence conceptually weak. See e.g., Parfums de Coeur, Ltd. v. Lazarus, 83 USPQ2d 1012, 1017 (TTAB 2007) (“BODYMAN clearly refers to the ‘person' depicted in the design element, a cape-wearing superhero who is merely a torso or ‘body'”); Blue Man Prods., Inc. v. Tarmann, 75 USPQ2d 1811, 1820 (TTAB 2005) (the mark BLUE MAN GROUP has the connotation of the appearance of the performers).

          We find that the term PATCH is conceptually and commercially weak, that the term MAN is highly suggestive of the entity or individual performing the patch services, and that PATCHMAN as a whole is highly suggestive and entitled to a narrow scope of protection. See In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1154 (TTAB 2012) (“GRAND HOTEL is highly suggestive, and therefore the scope of protection to which the cited registration is entitled is quite limited.”)

          “Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.” Sure-Fit Prods. Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958). See also Juice Generation, 115 USPQ2d at 167 (“The weaker [a registrant's] mark, the closer an applicant's mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.”).

The TTAB found that the addition of the terms THE and BOYS and the design element in the applied-for THE PATCH BOYS mark was sufficient to distinguish from the cited PATCHMAN mark. See In re Cooper's, Inc., 163 USPQ 656, 657 (TTAB 1969) (“although the designations ‘YOUNG GUY' and ‘WEE GUYS' may engender similar meanings, the substantial differences between them in both sound and appearance is sufficient, in view of the nature of such marks, to obviate any likelihood of confusion”); In re Hunke & Jochheim, 185 USPQ 188, 189 (TTAB 1975) (“the addition of other matter to a highly suggestive or descriptive designation, whether such matter be equally suggestive or even descriptive, or possibly nothing more than a variant of the term, may be sufficient to distinguish between them so as to avoid confusion”).

Even though the services were related, the TTAB found that confusion was unlikely in view of the narrow scope of protection afforded the cited mark. Accordingly, the TTAB reversed the Section 2(d) refusal.

The attorneys at Thomas P. Howard, LLC handle trademarks nationwide including in Colorado.