A divided Board panel reversed a Section 2(d) refusal of MINIBAR SMARTSNAX for packaged snack food “for distribution through refrigerators and food storage cabinets having sensors to detect presence and removal of packages.” The panel majority found no likelihood of confusion with the marks SMART SNACKS for candy and THE SMART SNACK for processed nuts. The judges disagreed as to whether the involved goods travel in different channels of trade and whether purchasers of applicant’s good will exercise more than ordinary care. In re Minibar North America, Inc., Serial No. 87130884 (October 15, 2019) [not precedential] (Opinion by Judge Jyll Taylor).

The Board found the marks to be more similar than dissimilar. Applicant’s third-party website and registration evidence was inadequate to show that the cited marks are weak. However, THE SMART SNACK for processed nuts has some inherent weakness in that “it connotes a beneficial snack.” As for the goods, the Board found them to legally identical insofar as candy and nuts are concerned.

Turning to the channels of trade, because there are no restrictions in the cited registrations, the panel majority recognized that the Board must presume that they travel “through all usual channels of trade to all normal potential purchasers.” (emphasis in original). However, the panel majority found that the “established, likely-to-continue channels of trade are distinct.” Applicant’s goods are limited to sale to hotels, motels, and temporary stay facilities through sensor-enabled units. These channels are “outside the usual ones” for registrant’s goods, and the examining attorney did not provide any evidence to establish the relatedness of the trade channels.

Moreover, the panel majority agreed with applicant that “professional temporary lodging purchasers” of applicant’s goods will exercise more than ordinary care in their purchasing decisions. Applicant’s goods will likely be purchased in larger quantities and must be appropriately packaged.

The panel majority concluded that the similarity between the marks and the identity of the goods were outweighed by the distinct trade channels and the purchaser care vis-a-vis applicant’s goods, and so it reversed the refusal.

Judge Christopher Larkin, in dissent, contended that the panel majority had misapplied the third du Pont factor (trade channels), leading to an incorrect finding under the fourth factor (sophistication of purchasers).

Judge Larkin maintained that the unrestricted identifications of goods in the cited registrations, when properly construed, encompass the specific trade channels set forth in the subject application. It was improper for the majority to read into the registrations any limitations on channels of trade. The Board “may not assume, as the majority does, that only Applicant, and never Registrants, would sell candy and nuts to “hotels, motels, and temporary stay facilities” for  distribution through minibars. Thus the channels of trade for the involved goods overlap, and presumably so do the classes of consumers.

As to purchaser sophistication, Judge Larkin opined, because the channels of trade and classes of customers overlap, the Board must assume that these overlapping purchasers exercise the same degree of care. He would deem this fourth factor to be neutral.

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Text Copyright John L. Welch 2019.