The USPTO refused to register the mark CLINCH PICK for “Military and tactical knives; fixed bladed knives” [PICK disclaimed] on the ground of likelihood of confusion with the registered mark CLINCH DRIVE for “Hand tools, namely, wrenches” [DRIVE disclaimed]. Given the disclaimers, the marks seem pretty close. What about the goods? How do you think this came out? In re Shivworks Products Group, LLC, Serial No. 88330418 (September 4, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis).

Sure enough, the Board found that, although the meanings or connotations of the words PICK and DRIVE may differ, consumers are likely to place more significance on the initial and distinctive word CLINCH. Viewing the marks in their entireties, the Board found them to be more similar than dissimilar.

As to the goods, the examining attorney maintained that both applicant’s and registrant’s goods are a type of hand tool often found in the same shopping category called “KNIVES and TOOLS,” as illustrated by screenshots from several online retailers. In addition, some manufacturers offer a product called a multi-tool which commonly includes knives and wrenches as components. Furthermore, he asserted, knives and wrenches are provided “as both survival and utility goods meant to be used together for a variety of projects and situations.” Thus, the involved goods are similar or complementary in terms of function and therefore are related for likelihood of confusion purposes.

The Board threw a monkey wrench into the examining attorney’s argument. “While the evidence submitted by the Examining Attorney  . . .  demonstrates that Applicant’s and Registrant’s goods travel in similar trade channels and are offered to overlapping classes of consumers, the evidence of record nonetheless is insufficient to show that a single entity provides both Applicant’s and Registrant’s goods under a single mark.”

The fact that the involved goods are found under the same shopping category, “KNIVES and TOOLS,” does not necessarily show that the goods are related for likelihood of confusion purposes. “Indeed, the shopping category itself delineates the goods by identifying them separately.” Moreover, neither applicant or registrant offers a multi-tool with a wrench and a knife, and in any case the multi-tool examples of the examining attorney include folding knives, not fixed blade knives.

In sum, the USPTO’s evidence failed to show that the involved goods are related.

And so the Board reversed the refusal to register.

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Text Copyright John L. Welch 2020.