Knife manufacturer successfully overcomes rejection of trademark application. IN RE SHIVWORKS

A trademark is a word, phrase or symbol that tells consumers who is selling a product. The key feature of a trademark is the association consumers make between the trademark and products produced by a company. In the United States, when a company begins branding products that it sells with a trademark, the company is automatically granted some rights to the trademark. Registration of a trademark is not required to start using a trademark in commerce in the United States but registration grant a trademark owner additional rights. For example, federal registration of a mark gives rise to the legal presumption that the registrant is in fact the trademark owner. Federal registration also allows a trademark owner/registrant the ability to file a lawsuit related to the mark in the federal court system.

Section 2(d) of the Lanham Act provides that the United States Patent and Trademark Office may refuse to register a trademark if it so resembles a prior used or registered mark “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). Whether a likelihood of confusion exists is determined using the factors set out in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). The DuPont factors are a list of factors that the United States Patent and Trademark Office and courts in the United States will consider when determining if there is a likelihood of confusion between two trademarks. Those factors are: 1) Strength of the senior user’s trademark, 2) Similarity of the trademarks, 3) Similarity of the products or services, 4) Likelihood that the senior user will bridge the gap, 5) The junior user’s intent in adopting the mark, 6) Evidence of actual confusion, 7) Sophistication of the buyers, 8) Quality of the junior user’s products or services, 9) related products and services.

This means that it is important for a trademark applicant to be prepared to explain how their trademark is different than similar trademarks which are already registered. If a trademark applicant can explain why there is not a likelihood of confusion then it is still possible to register a trademark even when there are other similar trademarks already registered.

IN RE SHIVWORKS PRODUCT GROUP, Serial No. 88330418 (TTAB 2020) is an example of a case where a trademark owner was able to register their trademark even though the application was originally refused for likelihood of confusion.

Applicant filed a trademark application to register the standard character mark CLINCH PICK on the Principal Register for “Military and tactical knives; fixed bladed knives” in International Class 8.

The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the mark CLINCH DRIVE registered on the Principal Register for “Hand tools, namely, wrenches” in International Class 8. Applicant appealed the refusal to the Trademark Trial and Appeal Board.

The TTAB reviewed the DuPont factors to determine whether there was a likelihood of confusion. With respect to the similarity of the two trademark the TTAB found that the CLINCH PICK mark and the cited CLINCH DRIVE mark were more similar than dissimilar. The TTAB found that there was not enough evidence submitted to show that the similarities between Applicant’s goods and Registrant’s goods were enough to cause likelihood of confusion. For the channels of trade, the TTAB found that there was a likliehood of confusion because knifes and tools were both sold by online retailers to overlapping consumers. The TTAB noted that Applicant’s target customer may be sophisticated buyers of knives but that the least sophisticated purchasers are the relevant population of consumers, therefore this factor was neutral.

The TTAB concluded that while the marks are similar and the parties’ respective goods may travel in overlapping trade channels and be offered to overlapping classes of consumers, the parties’ respective goods have not been shown to be related. Based on this conclusion the TTAB found that confusion is unlikely and reversed the Examining Attorney refusal.

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