IP Law Daily, TRADEMARK—TTAB: ENDORPHINS mark for hats and shirts confusingly similar to ENDORPHIN, with design, for similar goods, (Jan 30, 2014)

By Mark Engstrom, J.D.

A trademark applicant could not register the standard character mark ENDORPHINS, for hats and shirts in International Class 25, because the mark was confusingly similar to the registered mark ENDORPHIN, with design, for clothing that included hats and t-shirts in the same class, the Trademark Trial and Appeal Board has ruled (In re Adam Khatib, January 22, 2014, Greenbaum, C.). A trademark examining attorney’s refusal to register the mark was therefore affirmed.

Likelihood of Confusion

After conducting a likelihood of confusion analysis that focused on six likelihood of confusion factors—the conditions of sale, third-party use, and the similarity of marks, goods, channels of trade, and classes of purchasers—the Board concluded that the substantial similarity of the applicant’s mark and the registrant’s mark was likely to cause consumer confusion regarding the source or sponsorship of the identified goods.

Similarity of goods. The application and the cited registration both included hats and t-shirts in their identification of goods. The goods were therefore identical, the Board concluded, at least in part.

Similarity of trade channels, purchaser classes. Because the identified goods included “identical hats and t-shirts,” and there were no limitations on the channels of trade or classes of purchasers in either the application or the cited registration, the Board had to presume that the applicant’s goods and the registrant’s goods would be sold in the same channels of trade to the same classes of purchasers.

Conditions of sale. The Board was bound by the descriptions of the goods in the application and cited registration. Because those descriptions were not restricted as to price, the goods at issue had to include both expensive and inexpensive clothing. Because inexpensive hats and t-shirts would not be purchased with a great deal of care and would not require purchaser sophistication, the likelihood of confusion was increased.

Similarity of marks. The word ENDORPHIN was the dominant portion of the registered mark ENDORPHIN, with design. The design and stylization elements in the mark were minimal, the Board noted, and did not overcome the dominance of the literal element ENDORPHIN.

To the extent that consumers would recognize the design element as a “molecular design of the chemical endorphin,” the design merely served to visually represent the literal term ENDORPHIN and did not distinguish the registrant’s mark from the applicant’s mark. In addition, the applicant’s mark ENDORPHINS was simply the plural form of the word ENDORPHIN. Contrary to applicant’s assertions, there was no material difference between the singular and plural forms of the same word.

In light of those findings, the Board concluded that, when applicant’s mark and the registrant’s mark were compared in their entireties, the marks were sufficiently similar in appearance, sound, connotation, and commercial impression that, if they were used in connection with related goods, confusion would likely occur.

Third-party use. The applicant submitted copies of seven active third-party registrations that incorporated the term ENDORPHINS, and its “literal equivalents,” for similar goods. Unlike the marks in the application and cited registration, however, none of the third-party registrations used the words ENDORPHIN or ENDORPHINS alone or with a minimal design element.

In addition, five of the seven third-party registrations were for services, not clothing. The two that were for clothing—ENDORPHIN WARRIOR and GOT ENDORPHINS?—were for marks that created commercial impressions that were quite different than the marks of the applicant and registrant. In any event, the third-party registrations were of limited value because they did not provide evidence of the marks’ use in commerce or their familiarity among the public.

Finally, third-party registrations could not assist the applicant in registering a mark that was likely to cause confusion with the registered mark. For those reasons, the evidence did not show that the term ENDORPHIN, in its singular or plural form, was weak on its face when it was used for clothing.

Conclusion

When the Board considered the relevant confusion factors and the facts and arguments of record, it concluded that the standard character mark ENDORPHINS and the composite mark ENDORPHIN, with design, when contemporaneously used on the identical goods that were identified in the subject application and registration, were likely to cause consumer confusion about the source or sponsorship of those goods.

The case is Serial No. 85556033.

Attorneys: Matthew H. Swyers (The Trademark Company) for Adam Khatib. David Yontef, Trademark Examining Attorney.

Cases: Trademark USPTO