New York Trademark Attorney Blog
A few weeks ago the Board issued a decision in In re Vox Media Inc., Serial No. 87099703 (July 18, 2018) [not presidential]. This case is instructive on multiple general rules that are commonly applied by the Board when determining if there is likelihood of confusion between the sources of two marks. In this case, the Examining Attorney refused the applicant’s mark on the grounds of likelihood of confusion. The decision sets forth rules that practitioners and applicants must keep in mind when clearing trademarks, filing for trademarks, responding to office actions, and lastly when determining if an appeal or an opposition or cancellation should be filed. The marks in the instant case are CODE2040 (the cited registrant’s mark) and CODE (the applicant’s mark).
The services for CODE2040 are: “Educational services, namely, providing internships and apprenticeships in the fields of engineering and technology; educational services, namely, providing workshops, classes, and retreats in the fields of leadership, business, entrepreneurship, technology, engineering, design, job searching, job interviewing skills, and professional networking”.
The services for CODE are: “Educational services, namely, arranging, organizing, and conducting educational events, conferences, seminars, and symposia in the fields of media, technology, business, commerce, consumer products, entrepreneurship, startup businesses, enterprise technology, digital technology, and mobile platforms.”
Goods and services are compared by the identifications set forth in the applications and registrations. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Extrinsic evidence will not be viewed, only the language used to identify the goods and services in the application or registration is relevant. See In re I-Coat Co., LLC, 126 USPQ2d 1730 (TTAB 2018). As long as there is overlap in any one good or service the other goods or services need not be examined, because likelihood of confusion will be found in connection with the class of goods or services with any overlap at all. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010).
Since the services were identical in part and overlapping, special rules apply. the Board presumes the distribution channels and the classes of consumers are the same. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). In addition, the Board will also require a lesser degree of similarities between the marks. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Thus, in the case at bar, the second and third du Pont factors weigh in favor of finding a likelihood of confusion.