New York Trademark Attorney Blog
A recent decision issued by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) finds women’s athletic clothing and bicycle clothing related to electric bicycles for purposes of likelihood of confusion. The Applicant filed a trademark application for the mark LUNACYCLE in standard characters on the Principal Register for electric bicycles and related parts (frames and motors) in international class 12. The Examining Attorney refused the application citing the registration for the mark LUNA in a stylized format, view the stylization here, for women’s bicycle clothing and clothing accessories in international class 25. Applicant appealed to the Board. See In re Cycles, Serial No. 87132160 (September 18, 2018).
The marks at issue must be considered as a whole and not dissected. More or less weight may be given to a particular aspect of the mark or a particular feature. Therefore, the visual appearance may be enough to conclude the marks are similar, the sounds of the marks when pronounced may be sufficient, the meanings of the marks in and of itself may be adequate to determine that this du Pont factor favors finding a likelihood of confusion. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Applicant argued that his mark incorporated the word lunacy, but there was no reason to believe consumers purchasing bicycles would perceive the term LUNACYCLE as “lunacy cle”. The Board pointed out that there is no correct pronunciation for a trademark, and that it is more likely that consumers of bicycles would understand that the mark represented two words Luna and Cycle. Moreover it is likely that the consumer would focus on the arbitrary word Luna and less significance would be given to the generic word cycle.
In regard to the registrant’s mark, even though it contains a word LUNA and design features, the word is considered the dominant element of the mark, since consumers will use the word element to request the goods. Therefore, the term LUNA is the dominant feature of both marks. The rectangular feature of the mark is quite common and thus, not given much weight in the commercial impression, similar to a descriptive word that is disclaimed in a trademark. The Board concluded that the design features in registrant’s mark did not lessen the similarities between the marks, and that the similarities weigh in favor of finding a likelihood of confusion.
Next the Board evaluated the relatedness of the goods. In reviewing this factor, evidence may include news articles, websites, or advertisements that show the goods used together, used by the same purchasers, advertised together or sold by the same distributors or manufacturers. Typically, an Examining Attorney will present evidence showing the same source selling both applicant’s and registrant’s type of goods. This can include either brick-and-mortar retail shops or e-commerce online shops selling the goods named in the registration and the application. Here, the Examiner showed that electric bicycles are sold in the same trade channels as traditional bicycles that also offer women’s bike apparel. The majority of evidence was from specialty shops selling both types of goods and this was persuasive in finding a relatedness of goods. The Board also determined that the trade channels were similar and favored finding confusion.
Lastly, the Board reviewed what if any similar marks were in use on similar goods. A significant amount of third party use of similar marks on similar goods will show a mark is relatively weak, and only entitled to a narrow scope of protection (also known as the crowded field argument). The term commonly used among third parties does not have to be descriptive in connection with the goods and or services to be considered weak. Although the applicant alleges there were over 100 registrations incorporating the term LUNA and formatives thereof in class 25, there was no evidence of actual use of the mark or variations thereof in connection with women’s bike apparel or related goods presented. Therefore, the Board found this factor neutral. After viewing all the evidence, The Board affirmed the 2(d) refusal. If you have questions, pertaining to likelihood of confusion or other trademark related questions, please contact the firm for a courtesy consultation.