IP Law Daily, TRADEMARK—TTAB: SAMSUNG DIAMOND PIXEL mark was likely to be confused with DIAMOND PIXEL mark, (Jun 12, 2023)
Law Firms Mentioned:Lewis Roca Rothgerber Christie LLP
Organizations Mentioned:Lewis Roca Rothgerber Christie, LLP | Samsung Electronics Co., Ltd.
By Kevin M. Finson, J.D.
Similar marks were likely to be confused because they were used with related services.
Samsung’s proposed mark for digital displays was likely to be confused with a registered mark for semiconductor devices, the Trademark Trial and Appeal Board has held. The goods were related, and the marks were highly similar (In re: Samsung Electronics Co., Ltd., June 1, 2023, Kuhlke, K.).
Samsung Electronics Co., Ltd. (Samsung) sought registration on the Principal Register of the standard character mark SAMSUNG DIAMOND PIXEL for digital display panels and related goods in International Class 9. The Examining Attorney refused registration on the ground of likelihood of confusion with the standard character mark DIAMOND PIXEL registered for use with “semi-conductors; semiconductor devices; integrated circuits; image sensors” in International Class 9. Samsung appealed. The Board considered the DuPont factors for which there was evidence of record.
Similarity of services, channels of trade, classes of consumers. The examining attorney argued that the goods were related because the registrant’s semiconductors and Samsung’s displays were both components used in electronic devices. The examining attorney presented numerous third-party websites offering such goods under the same mark. The Board held that these websites were sufficient to show the goods were related, that they were sold on overlapping trade channels, and were sold to the same classes of consumers. These three factors all weighed in favor of a likelihood of confusion.
Similarity of the marks. The Board found that the dominant element of Samsung’s mark was the leading and unshared word SAMSUNG, but that this did not overcome the similarity arising from the fact that Samsung’s mark incorporated the entirety of the registered mark. This factor weighed in favor of a likelihood of confusion.
Balancing the factors, the Board affirmed the refusal to register.
The Case is Serial No. 90127492.
Attorneys: Olga Katsnelson (Lewis Roca Rothgerber Christie LLP) for Samsung Electronics Co., Ltd. Kathryn Browning for the USPTO.
Companies: Samsung Electronics Co., Ltd.
Cases: Trademark USPTO