The USPTO refused registration of the mark FOUNDIT THEFT RECOVERY for “GPS tracking devices, namely, personal asset tracker, personal tracker, vehicle tracker” (THEFT RECOVERY disclaimed), finding it likely to cause confusion with the registered mark IFI I FOUND IT (in stylized form with design) for “electronic devices for locating and tracking lost articles using radio frequency, global positioning systems, and/or cellular communication networks.” The Board found that applicant’s goods are broad enough to encompass the cited goods, making the goods legally identical in-part. But what about the marks? How do you think this came out? In re Spy Tec International Inc., Serial No. 87543668 (June 13, 2018) [not precedential] (Opinion by Judge Francie R. Gorowitz).

We know that when the involved goods are identical (in-part) a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Moreover, “when a mark contains both words and designs, the verbal portion of the mark is normally more likely to indicate the origin of the goods to which it is affixed because it is the portion of the mark that consumers would use to refer to or request the goods.”

The Board found the dominant part of the cited mark to be the literal phrase I FOUND IT. The
dominant part of applicant’s mark is the term FOUNDIT since it is both the first part of the mark and the only element that is not disclaimed. “The first part of a mark is frequently the most dominant portion thereof.”

Applicant argued that “the word ‘found’ in relation to Registrant’s electronic devices for locating lost articles is not very distinctive.” The Board acknowledged that the word, “found” may be weak in connection with registrant’s goods, but it pointed out once again that “even suggestive or weak marks are entitled to protection from the use of a very similar mark for legally identical

Viewing the marks in their entireties with the non-dominant features appropriately discounted, we find the Cited Mark and the mark FOUNDIT THEFT RECOVERY are similar in meaning and sound and that the similarities in the marks outweigh any dissimilarities. Similarity as to one element (e.g., sight, sound, or meaning) has been held sufficient to support a finding of confusing similarity. Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1914 (TTAB 2000) (“It is not necessary that marks be similar in all three of the elements of sight, sound, and meaning to support a finding of likelihood of confusion.”).

And so the Board affirmed the Section 2(d) refusal.