Westchester Women's Bar Association

Overcoming a 2(d) Refusal With the Crowded Field Argument

Trademark Applications may be refused for numerous reasons. One of the more difficult refusals to overcome is a Likelihood of Confusion Refusal (2(d) Refusal). Sometimes overcoming a 2(d) Refusal is accomplished by presenting strong evidence of a weak formative supported by third party registrations and uses in the marketplace. This is exemplified in a recent reversal by the Trademark Trial and Appeal Board (“TTAB” or the “Board”), see In re Garan Services Corp ., No. 88674888 (November 3, 2021) [not precedential].

The Applicant was seeking to register MATCH STUDIO, in standard characters for apparel, namely tops and bottoms. Applicant disclaimed the exclusive right to use the term “Studio”. The Trademark Office refused the application based on a likelihood of confusion with two marks owned by the same entity. The first cited mark was MATCH in standard characters and the second mark was MATCH and Design (click here for a visual representation of the design mark, U.S. Registration No. 4808153). The cited marks covered a variety of apparel items for babies, children, women, and men.

Since, the design element was a point of difference between the applicant’s mark and the registrant’s mark, the Board limited its analysis to the two standard character marks. If there is confusion between the two word marks, this would be a sufficient basis to also affirm the refusal of the applicant’s MATCH & Design mark. Regarding the goods, not all identified goods must be related, but it is sufficient to find relatedness with any one good in applicant’s identification and with one product in the cited registration. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp ., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Comput. v. TVNET.Net, Inc ., 90 USPQ2d 1393, 1398 (TTAB 2007). Here the goods are in part legally identical, tops and bottoms v. woven bottoms and tops. Since the goods are in part identical, there is a presumption under trademark law that the channels of trade and classes of consumers are the same.  See United Global Media Grp., Inc. v. Tseng , 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Rsch. Inst ., 101 USPQ2d 1022, 1028 (TTAB 2011).  The relatedness of the goods and the similarity of the trade channels favor finding confusion.

The next Du Pont factor the Board analyzed was the sixth, the number and nature of similar marks in use on similar goods.  This factor analyzes the strength of the cited marks, both the conceptual (inherent distinctiveness) and commercial strength (strength of secondary meaning). To evaluate the conceptual strength of the cited mark MATCH, there must be a determination of where the mark lies on the distinctiveness continuum. Evidence of the number of similar marks on similar goods will impact if a trademark is considered descriptive or suggestive and the degree of suggestiveness or descriptiveness. If there are numerous third-party registrations using the mark or an element of the mark, it will show consumers understand the mark to have a well-recognized suggestive or descriptive meaning. Therefore, the mark or a portion of the mark will be relatively weak and given a narrow scope of protection. See Juice Generation, Inc. v. GS Enters. LLC , 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015).

Also relevant for the sixth Du Pont factor are uses of the mark or a portion of the mark in the marketplace. For this type of evidence, an applicant can submit excerpts of websites demonstrating use of the mark for similar goods or services. This will prove that others consider the mark to have a highly suggestive meaning or descriptive meaning when applied to certain related goods or services. “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.” In re FabFitFun , 127 USPQ2d 1670, 1674 (TTAB 2018) (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 sixth Du Pont factor favors finding no confusion among the marks. The evidence here (20 third-party registrations before the parties’ marks registered and 35 third-party registrations after, in addition to 15 examples of marketplace use) showed the term “Match” applied to clothing is highly suggestive and travels in a crowded field.

Lastly the Board evaluated the similarities of the marks. The Board disagreed with the Examining Attorney’s conclusion that the term “Match” was the dominant part of the applicant’s trademark. Since both terms “Match” and “Studio” are highly suggestive they share equal weight in creating the commercial impression. A disclaimed part of a mark is still considered in a likelihood of confusion analysis. See Midwestern Pet Foods v. Societe des Produits Nestle , 103 USPQ2d at 1440; Nat’l Data Corp., 224 USPQ at 751. The Board concluded that considering the weakness of the cited marks, the applicant’s mark MATCH STUDIO created a different commercial impression (adding “Studio” was sufficient to distinguish the marks). The TTAB reversed the refusal, concluding that the parties’ marks were not similar, and confusion was not likely to occur. This case although not precedential is another important finding for applicants asserting the crowded field argument. If you have questions involving likelihood of confusion or other trademark inquiries, please contact the firm for a courtesy consultation.

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