The USPTO refused to register MASTER RANCHER, finding a likelihood of confusion with the registered mark RANCHMASTER, both for footwear. Applicant True Value argued that the meaning and commercial impressions of RANCHMASTER and MASTER RANCHER are distinct, making confusion therefore unlikely, that “MASTER” is a house mark, has a family of MASTER marks, and that its prior registration of MASTER RANCHER for gloves should pave the way to registration. How do you think this came out? In re True Value Company, L.L.C., Serial No. 88335947 (October 2, 2020) [not precedential] (Opinion by Judge Melanye K. Johnson).

The Board found the marks to be “highly similar.” The transposition of the words does not create and new meaning.

 

Applicant uses one of the alternate definitions of “master”—“a man in charge of [a particular ranch]”—to argue that the meaning and commercial impressions of RANCHMASTER and MASTER RANCHER are distinct. *** The word “master,” as it is used in the Registered Mark, RANCHMASTER, could also evoke images of a greatly skilled or proficient rancher; we have no evidence to the contrary.

True Value claimed that MASTER is a house mark, pointing to its marks MASTER MECHANIC, MASTER ELECTRICIAN, MASTER PLUMBER, MASTER PAINTER, and MASTER TRADESMAN. However, True Value failed to make those registrations of record, and so the Board dismissed that argument.

As to the “family of marks” argument, that argument is not available to an applicant in an ex parte Section 2(d) appeal.

True Value pointed to sixteen sets of registrations, in a variety of fields, for marks in which the component words were transposed, contending that the USPTO has a policy of allowing such marks to register. The Board was unimpressed, observing once again that each case must be decided on its own record.

Finally, True Value argued that its ownership of a prior registration for the mark MASTER RANCHER for gloves should provide a basis for registration. The Board noted that “[w[here an applicant owns a prior registration that is over five years old and the mark is substantially the same as in the applied-for application, this can weigh against finding that there is a likelihood of confusion.” Inn at St. John’s, 126 USPQ2d at 1746 (citing In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399 (TTAB 2012)).

The Board pointed out, however, that Strategic Partners “addressed the ‘unique situation” of coexistence of an applicant’s existing registration with a cited registration for over five years.” The goods in the prior registration were identical with those of the new application. Here, the prior registration was only two years old, and the subject application covers “footwear,” thus moving closer to the cited registration.

Accordingly, and in contrast to our finding in Strategic Partners, we find that Applicant’s prior registration does not “tip the scale” and obviate a likelihood of confusion between Applicant’s Mark and Registrant’s Mark.

And so the Board affirmed the refusal to register.

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Text Copyright John L. Welch 2020.