The Counterclaims: The Board found that opposer’s standard character mark SHARED is merely descriptive and that opposer’s composite mark should not have registered without a disclaimer of the merely descriptive word “shared.” “The term ‘shared’ immediately describes a feature and characteristic of Opposer’s services, namely, work and office space that is used and occupied by more than one person.”
Turning to the opposer’s Section 2(f) claim, the Board found that opposer had failed to prove that the term “shared” had acquired distinctiveness as a source-indicator for Opposer’s services. And so it granted applicant’s counterclaim for both of opposer’s registrations, but it allowed opposer thirty days to file a disclaimer of SHARED in the word+design registration.
Likelihood of Confusion: Applicant conceded priority, and the parties did not raise the issue of whether opposer’s composite mark SHARED + design is comprised of non-distinctive
Inasmuch as Applicant conceded priority, and Opposer may maintain registration of the mark with entry of a disclaimer, we will presume, solely for purposes of determining Opposer’s claim of likelihood of confusion, that Opposer has filed the required disclaimer and thus maintains proprietary rights in the service mark as a whole for the incubation services listed in the registration, such mark is distinctive, whether inherently or otherwise, and that Opposer maintains its standing to bring the opposition.
The Board then focused its likelihood of confusion inquiry on opposer’s composite mark SHARED + design. Again, the “overwhelming evidence” – including the dictionary definitions, internet excerpts explaining the nature of coworking spaces and incubators, Opposer’’s own website, third-party use of ‘shared’ to describe both Opposer’s services and those of third-parties’ – established that the ‘shared’ word portion of the composite mark “is highly descriptive, and when combined with the simple rounded square backdrop for each letter the overall mark as a whole is conceptually weak.”
Considering the record as a whole, the extreme conceptual weakness of the term “shared” for incubation and coworking spaces, and that simple rounded square backdrop for each letter are on the “less distinctive part of the spectrum,” Serial Podcast, 126 USPQ2d 1075, we find that Opposer’s composite mark is appropriately placed at the lower or weaker end of the spectrum of “very strong to very weak.”
The Boare noted that ‘shared’ is not only the first element of applicant’s mark, but is the entire literal element of opposer’s mark. The addition of “space” to “shared” in applicant’s mark “presents the same meaning as ‘shared’ in Opposer’s mark (i.e., shared space is a desirable feature and defining characteristic of coworking space). Indeed, the combination of these terms makes the marks resemble each other very closely in sight, sound, connotation and commercial impression.”
The Board concluded that the overall similarities in sound, meaning, and commercial impression outweigh any visual difference. It observed that “[e]ven marks that are deemed ‘weak’ or merely descriptive are still entitled to protection under Section 2(d) against the registration by a subsequent user of a similar mark for related services.”
Because the services are in-part identical and unrestricted as to trade channels, the second and third du Pont factors favor finding that confusion is likely. The overall similarities in sound, connotation, and commercial impression between the marks outweigh their visual differences. Although Opposer’s composite mark is neither conceptually nor commercial strong, it is still entitled to protection. The factors involving the conditions under which and buyers to whom sales are made, nature and
extent of any actual confusion, and extent of the opportunity for actual confusion are all neutral. On balance, we find that the in-part identity of the services and the similarity of the marks’ commercial impressions outweigh any weaknesses in Opposer’s mark, and that confusion is likely between Opposer’s mark and Applicant’s mark .
Conclusion: The Board sustained the opposition to applicant’s mark.
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Text Copyright John L. Welch 2020.