The USPTO refused to register the mark BLU for “Wireless electronic tooth brushes for use in connection to an application on a mobile device for assisting the user with brushing their teeth,” on the ground of likelihood of confusion with the mark shown below, for, inter alia, “toothbrushes.” Applicant claimed that its customers are sophisticated and want a high quality product, not a low quality, ordinary toothbrush, and it argued that the marks are distinguishable. How do you think this came out? In re Ionic Blu LLC, Serial No. 88311876 (January 4, 2021) [not precedential] (Opinion by Judge Mark Lebow).
The Goods: The Board agreed with Examining Attorney Max Faucette that, because registrant’s toothbrushes encompass applicant’s electronic toothbrushes, the involved goods are in part legally identical. Applicant did not dispute that its goods are encompassed by “toothbrushes,” but claimed that it does not actually sell toothbrushes, but rather “bathroom fixtures.” The Board dismissed that argument because likelihood of confusion must be determined based on the goods identified in the application and cited registration.

The Board must presume that the overlapping goods travel through the same channels of trade to the same classes of consumers. Because there are no limitations in the identifications of goods and so the relevant consumers must include all ordinary customers for toothbrushes.

That Applicant’s goods are for use “in connection to an application on a mobile device for assisting the user with brushing their teeth” does not mean that all consumers are or must be sophisticated. Smart phones and mobile tablet devices are as ubiquitous these days as televisions; downloading an “app” is as simple as downloading a song.

The Marks: Since the goods are in part identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. The Board observed that likelihood of confusion “is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting other matter. If an important or significant portion of both marks is the same, as in the case here,then the marks may be confusingly similar notwithstanding some differences.”
 

While Registrant’s mark includes a circle design with two halves, red and blue, it also reinforces the wording RED BLU. Consumers are likely to call for Registrant’s goods using the wording RED BLU, thus making the mark’s literal elements more important than the design. In re Viterra, 101 USPQ2d at 1911 (“the verbal portion of a word and design mark likely will be the dominant portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (“if one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods”).

The Board found that the marks “will be perceived similarly by consumers, who are likely to consider Applicant’s mark as representing another line of Registrant’s toothbrushes, simply another iteration of Registrant’s mark or vice-versa.”
 

Conclusion: Finding that the first, second, third, and fourth DuPont factors weigh in favor likelihood of confusion, the Board affirmed the refusal.

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TTABlogger comment: How did you do? Do you think consumers in the real world would confuse these marks, even on identical products?

Text Copyright John L. Welch 2021.