[This guest post was written by Kira-Khanh McCarthy, a 2L at the University of Notre Dame School of Law]. The USPTO refused registration of the mark LUNACYCLE, in standard characters, for electric bicycles, finding the mark likely to cause confusion with the registered mark LUNA, in the design form shown below, for women’s bicycle clothing and accessories. On appeal, Applicant contended that its mark is different in both sound and appearance, the goods are “readily and immediately distinguishable on their face” and marketed in different trade channels, and there is strong evidence of third party usage. Do you think the Board was convinced by these arguments? In re Luna Cycles, Serial No. 87132160 (September 18, 2018) [not precedential] (Opinion by Judge Angela Lykos).

The Marks: Applicant argued that Examining Attorney Alicia Collins Edwards did not pay enough attention to the design and appearance of the registered mark, referring to the word’s stylization and crescent moon design. Perhaps even more notable, Applicant asserted that the Examining Attorney incorrectly dissected the mark by placing too much emphasis on “LUNA.” Instead, Applicant contended that its mark was “a portmanteau of the word ‘LUNACY’ and ‘CYCLE.’” The Board was not impressed:

Under Applicant’s logic then, consumers would be more likely to understand and pronounce Applicant’s mark as “lunacy cle.” While in theory this is possible, it is highly unlikely. Rather, considering the goods for which registration is sought, it is more likely that consumers will understand the mark to represent a “telescoped form” of the two separate words “LUNA CYCLE” focusing on the first arbitrary portion “luna” as the dominant feature and according less significance to the generic term “cycle.”

To further its point that consumers would read Applicant’s mark as two separate words, the Board relied on Applicant’s own specimen of the mark displaying the letters “L” and the first “C” in larger font (see photo below). Because the Board found LUNA to be the dominant portion of Applicant’s mark, it concluded that the involved marks project “virtually the same connotation and commercial impression” despite having slight differences in sound and appearance.

The Goods: Here, Applicant argued that the goods are “readily and immediately distinguishable on their face.” The Board, however, noted that this issue should focus not on “whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of [the] goods.” L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984).

The Examining Attorney submitted evidence that both brick-and-mortar and online retail stores specializing in bicycle products (including electric bicycles) also sell women’s bicycle apparel under the same trademark. What’s more, the record indicated that electric bicycles and women’s bicycle apparel are complementary products and that “consumers would be likely to encounter one product while purchasing another.” As a result, the Board found the goods to be related in nature.

Trade Channels: Applicant claimed that the registered mark covered “promotional clothing items offered in connection with nutrition bars” which did not overlap with its electric bicycles. However, the Board noted that neither side’s identification contained any restrictions on channels of trade. Instead, the involved goods are offered for sale online and in brick-and-mortar specialty bicycle shops, as reflected by the record. And so, the Board found that the goods are marketed in the same trade channels to the same consumers.

Third Party Registrations: Finally, Applicant asserted that “the LUNA portion in the cited mark  is relatively weak and entitled to a narrow scope of protection.” While Applicant cited to over 100 registrations for LUNA-formative marks in class 25, the Board pointed to the lack of evidence of actual use of those marks, and it found that this was not enough evidence to prove that LUNA was so weak a mark that consumers are capable of making apt distinctions between LUNA marks. As a result, this factor was deemed neutral at best.

Conclusion: Balancing the relevant du Pont factors, the Board found for a likelihood of confusion and affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Compare this decision to the recent SQUEEZE JUICE COMPANY decision [TTABlogged here], where 12 third-party registrations sufficed to show that the term SQUEEZE is weak.

Text Copyright Kira-Khanh McCarthy and John L. Welch 2018.