Thursday, September 12, 2013

Test Your TTAB Judge-Ability: Are REAL CHOICE and CLEARCHOICE DENTAL IMPLANTS Confusable for Implant Services?

In this Section 2(d) opposition to registration of the mark REAL CHOICE, opposer claimed a likelihood of confusion with its registered mark CLEARCHOICE DENTAL IMPLANTS, both for dental implant services [DENTAL IMPLANTS disclaimed in the registered mark]. The services are legally identical, but are the marks close enough? Is the outcome real clear to you? Clear Choice Holdings LLC v. Implant Direct Int’l, Opposition No. 91190485 (August 26, 2013) [not precedential].

Because the involved services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. And because there are no limitations in the application or pleaded registration as to channels of trade or classes of customers, the Board presumed that the services are offered in the usual channels to the normal classes of customers.

As to the marks, the Board not surprisingly focused on the terms REAL CHOICE and CLEARCHOICE. It found the terms similar in appearance and sound, noting that each term prefaces the word "choice" with a one-syllable term featuring a long "e" vowel sound framed by consonants. And it noted that "real" is an anagram of "clear," minus the "c."

The Board also found the connotations of "real" and "clear" to be related, since "real" is listed as one of many synonyms for "clear." And the marks make similar commercial impressions in the context of the identified services.

Consequently the first duPont factor favored opposer.

The Board recognized that dental implant services may be expensive, but neither the application nor the pleaded registration limit the services to any certain price. There was no evidence that the purchasers are sophisticated, but the Board has previously noted that even ordinary consumers exercise greater care when making healthcare decisions. But then, careful consumers are not immune to source confusion when similar marks are used for identical services. The Board concluded that the similarities between the marks outweighed any sophisticated purchasing decision, and so this factor was deemed neutral.

Opposer claimed that its mark is famous, but its proofs fell "woefully short." There was no evidence of actual confusion, but also little opportunity for same since the parties overlap in only three markets.

Opposer's survey evidence suffered from numerous flaws: opposer failed to follow an established format to measure likelihood of confusion, the sample size was small, and the choice of the survey universe was wrong. [Opposer's expert stated that the survey was designed to test initial interest confusion, but the Board noted that the CAFC has not embraced that theory.] The Board gave the survey results no weight.

Finally, opposer claimed that applicant adopted its mark in bad faith, but the Board found no intent to deceive consumers, even if applicant did intend to copy opposer's logo and website (which it changed after being contacted by opposer).

Balancing the duPont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.


At 10:01 AM, Anonymous Mark L. Donahey said...

Holy cow! The Board issued this final decision less than 2 weeks after they held the oral hearing.

Initially, I thought this had to be some kind of record, but then I checked the status of some other recent hearings. It turns out 3 of the 4 hearings held in the last week of July already have decisions too, and one of them issued in only 12 days!

Is this something new, or have they been blazing through some of these all along? Kudos to the Board in either case.

At 10:25 AM, Anonymous Anonymous said...

""real" is an anagram of "clear," minus the "c."" Which means that the words are not anagrams at all. Unless the goods are a scrabble game, what difference does this make anyway? When was the last time you thought two products were related because they were anagrams? "Dog" and "God" are anagrams - does that make them similar?

I like how they discount the sophistication of the purchasers factor by noting that the description does not limit the cost. What was the applicant suppose to do? Claim "expensive" dental implants. They are all expensive by their nature. It's not necessary to include the obvious in the ID. You can't buy these at Walmart.

Strikes me as a bad decision.

At 10:56 AM, Blogger John L. Welch said...

Perhaps the Board is moving more quickly in deciding these rather straightforward cases. But the recent FOOTLONG decision came out about one year after oral argument, ANNAPOLIS TOURS about thirteen months, and HOUNDSTOOTH MAFIA about sixteen months.

At 1:49 PM, Anonymous Freiburger said...

@ Anonymous at 10:25AM:

I thought you were joking with the anagram comment, but wow, the Board actually made that argument:

"Indeed, REAL is an
anagram of CLEAR minus the 'c.'"

Dear dog, that may be the biggest stretch I've ever seen in a Board decision.

At 3:42 PM, Anonymous Anonymous said...

Real is phonetically similar to clear? The DuPont anagram factor? It is really clear that the Board was able to complete this case so quickly by eliminating legal work from the administrative process.


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