IP Law Daily, TRADEMARK—TTAB: THE EXPERIENCE composite mark was likely to be confused with EXPERIENCE standard character mark, (Jun 12, 2023)

By Kevin M. Finson, J.D.

Similar marks were likely to be confused because they were used with legally identical services.

A seller of outdoor gear’s proposed mark was likely to be confused with a registered mark, the Trademark Trial and Appeal Board has held. The services were legally identical, and the marks were highly similar (In re: Cabela’s LLC, June 2, 2023, Larkin, C.).

Cabela’s LLC (Cabela’s) sought registration on the Principal Register of a composite mark containing the words THE EXPERIENCE for services identified as “Providing behind the scenes access to factories and manufacturers in the nature of conducting guided tours of outdoor gear production factories and outdoor gear production facilities” in International Class 41. The Examining Attorney refused registration on the ground of likelihood of confusion with the standard character mark EXPERIENCE registered for, among other things, “Conducting guided tours of industries and educational subjects” in International Class 41. Cabela’s appealed. The Board considered the DuPont factors for which there was evidence of record.

Similarity of services, channels of trade, classes of consumers. The Board noted that the registration was not compliant with the USPTO guidance on proper identification of services consisting of guided tours, because such registrations were required to identify a concrete place and not a broad term such as “industries.” Nevertheless, because the Board was required to consider the registration that had actually been issued, it held that the term “industry” was broad enough to encompass the application’s services and therefore the services were legally identical. Because the services were legally identical, the Board was obligated to presume that the channels of trade and classes of consumers were also identical. These three factors all weighed in favor of a likelihood of confusion.

Similarity of the marks. The Board found that the dominant element of Cabela’s composite mark was the words THE EXPERIENCE, and that this made the appearance of the two marks similar, and the sound, connotation, and commercial impression of the mark bordered on identical with the registered mark EXPERIENCE. This factor weighed heavily in favor of a likelihood of confusion.

Balancing the factors, the Board affirmed the refusal to register.

The Case is Serial No. 88886799.

Attorneys: Bryan K. Wheelock (Harness, Dickey & Pierce, PLC) for Cabela's LLC. Martha L. Fromm for the USPTO.

Companies: Cabela's LLC

Cases: Trademark USPTO