Trademark registration opposed because punctuation was only difference between marks. Massage Heights v. TruCore

A trademark is traditionally thought of as a word, phrase or symbol, but anything that a product seller uses to distinguish its products from competitor’s products can be granted trademark protection. A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with a trademark, however registration is not required to begin using a trademark to brand products. Obtaining a right to a trademark law in the United States is based on using the trademark in commerce. The first person to use a trademark to brand products is considered the senior user and has priority over junior users of a trademark.

When a trademark application is filed in the United States, the United States Patent and Trademark Office reviews the application. The proposed trademark is scrutinized to see if it is confusing similar to an already registered trademark. If the USPTO does not believe the proposed trademark is confusingly similar, the trademark application is published for opposition. Opposition is an opportunity for trademark owners to object to the registration of a trademark because they believe it would damage their own registered trademark. The Trademark Trial and Appeal Board of the USPTO hears opposition applications.

There are various reasons that someone may oppose the registration of a trademark application, but the most common reason is that they believe it is confusingly similar to the opposer’s trademark. 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.” The DuPont factors are used to determine 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. How these factors are applied can be confusing therefore it is helpful to study case law to gain a better understanding.

Massage Heights IP LLC v. TruCore Distributors, Opposition No. 91249495 (TTAB 2021) is an example of an opposition proceeding where the opposer successfully convinced the USPTO to refuse registration.

TruCore Distributors filed an application seeking registration on the Principal Register of the standard character mark “LIVE LIFE. BETTER.” TruCore’s trademark would be applied to products such as blood pressure monitors and massage chairs.

Massage Heights IP, owns registered mark “LIVE. LIFE. BETTER.” for “massage therapy services” in International Class 44. Massage Heights opposed TruCore’s application on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).

The Trademark Trial and Appeal Board listed the DuPont factors which were scrutinized in its opinion. The TTAB found that the two trademarks were virtually identical in appearance, sound, connotation and commercial impression. When the same words are used in marks, the presence or absence of hyphens or other punctuation marks generally will be of little significance.

The relatedness of the goods and services was found to favor a of likelihood of confusion because the TTAB found massage products and massage services to be intrinsically related. The class of consumers were also found to have significant overlap because both parties trademarks would be directed to the same consumers seeking relief or relaxation.

The TTAB ultimately concluded that confusion was likely between Applicant’s LIVE LIFE. BETTER mark for “massage apparatus” and Opposer’s LIVE. LIFE. BETTER. mark for “massage therapy services.” This conclusion was due to the virtually identical marks, the related goods and services, and the overlapping classes of consumers.

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