Trademark for disinfectant wipes denied because confusingly similar. IN RE TRIP WIPES

Trademark for disinfectant wipes denied because confusingly similar. IN RE TRIP WIPES

A trademark is a word, phrase or symbol that indicates the identity of a product seller to consumers.  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 however registration strengths the rights associated with a trademark. 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 trademark 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.  The likelihood of confusion analysis considers all DuPont factors for which evidence is presented but may focus on the similarity of the marks and categories of products branded with the trademarks.

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 TRIP WIPES LLC, Serial No. 88517184 (TTAB 2020)  is an example of a case where a trademark owner was not able to register their trademark because of likelihood of confusion with an already registered trademark.

Trip Wipes LLC (“Applicant”) sought to register the mark TRIP WIPES (in standard characters, “Wipes” disclaimed) for on the Principal Register of “Antibacterial wipes; Disinfecting wipes; Sanitizing wipes” in International Class 5.

The Trademark Examining Attorney refused registration of Applicant’s TRIP WIPES mark pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the mark TRIPPY WIPES (“Wipes” disclaimed).  The TRIPPY WIPES trademark is reproduced above.

Applicant appealed the refusal to the Trademark Trial and Appeal Board (TTAB).  On appeal the Applicant’s primary arguments were (1) the difference between the dictionary definition of TRIP and TRIPPY combined with the styled version of TRIPPY were enough to prevent consumer confusion and (2) the existence of other registered trademarks that share the similarities of the trademarks involved in the appeal.

For the first point the TTAB noted that the proper test for how similar two marks are is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.  The applicant’s mark was for a standard character mark which could be presented in a number of different fonts or styles.  Comparing the two marks in their entirety as to appearance, sound, meaning and commercial impression, the TTAB found them to be more similar than different.

For the second point the applicant noted that (LIFE’S A TRIP / TRIPPY LIFE), (SKIP / SKIPPY) and (TRIP VIEW / TRIP VIEWER) were all similar registered trademarks.  The TTAB was not persuaded by this evidence.  Consistency in the examination of trademark application is a goal however, the decisions of previous Trademark Examining Attorneys are not binding, and each case is based on the evidence presented at that time.

In conclusion the TTAB found the marks to be more similar than dissimilar, the goods are legally identical, and the channels of trade overlap.  Based on these findings the TTAB affirmed the registration refusal.

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