New York Trademark Attorney Blog
The Board’s Fifth Precedential Case of 2024
Suggestive marks with some conceptual weakness are still afforded a relatively broad scope of protection. See Sage Therapeutics, Inc. v. SageForth Psychological Services, LLC, Opposition No. 91270181 (April 12, 2024) [precedential], where the Board sustained an opposition based on priority and likelihood of confusion grounds. The Applicant was seeking to register the mark SAGEFORTH in standard characters for a lengthy list of services in class 44. The relevant portion included providing information in the field of psychological counseling, assessments, diagnosis, and treatment. The registered mark, SAGE CENTRAL provided services in class 44 for providing health and medical information about postpartum depression and treatment. Opposer pleaded six of its registrations and properly made the registrations part of the record, and because the applicant did not counterclaim to cancel any of the registrations, but merely to restrict the services, priority was not an issue in this case. See our web page entitled, Likelihood of Confusion Refusals 2(d) Refusals, for more on this topic.
The likelihood of confusion analysis was limited to the SAGEFORTH and SAGE CENTRAL registration. Regarding the similarities of the marks, the Board noted that the shared term SAGE was the dominant element in both parties’ marks. The parties noted that the word Sage is used to indicate wisdom or wise advice which is suggesting that the therapy services will provide wise counseling. Because Sage is the first element in each mark it is likely to be remembered by consumers. The Board held that the marks were visually similar since the marks were both Sage formatives. In addition, the marks have similar meanings and structure, and are likely to have the same commercial impression. The Board summed up the issue by stating that the shared Sage term will run the risk that consumers will believe there is an association or connection between the Applicant and Registrant. The similarities of the marks weigh in favor of likelihood of confusion.