When considering a likelihood of confusion, one might naturally think a mark is registrable that is an antonym (opposite) of a registered mark. This was not the result in In re Sugar Free Specialties, LLC, Serial No. 90706411 (TTAB Dec. 7, 2022) (not precedential).
In Sugar Free Specialties, the applicant sought registration of “SMALL WINS” for “sweets and candies, namely, gummies and soft candies.” A United States Patent and Trademark Office (USPTO) examining attorney cited a registration for “BIG WIN” for “candy” because of confusing similarity. The applicant appealed and suffered a big, not small, loss.
Applying the customary DuPont likelihood of confusion factors, the Trademark Trial and Appeal Board (Board) found the goods were legally identical and presumed they traveled in the same channels of trade to the same potential customers. Id. at 4-5. It also found that a lesser standard of purchasing care would be exercised by buyers due to the low cost of the goods. Id. at 18-19.
The bulk of the Board’s analysis was spent on the DuPont factor of the similarity/dissimilarity of the marks. Its first consideration was whether the cited BIG WIN mark was conceptually strong. With no evidence provided on the point, the Board gave the BIG WIN mark “the typical scope of protection accorded a mark registered on the Principal Register pursuant to Trademark Act Section 7(b), 15 U.S.C. § 1057(b)”. Id. at 6-7.
The Board next compared the marks. It began with the customary statement that marks are considered in their entireties, including their appearance, sound, meaning and commercial impression, with similarity in one element being sufficient to find a likelihood of confusion. Id. at 7. The Board also noted that where the goods of an applicant and registrant are identical, “the degree of similarity between the marks requiring to support a finding [of] confusion is likely declines.” Id. at 7-8. It also stated that “more or less weight may be given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties.” Id. at 9.
The Board next considered the sound and appearance of the marks. While they sounded different, the Board found them to have “the same format, structure, and syntax” and that the marks were not materially different due to their cadences and intonations. They consequently were “more similar than they are different in appearance and sound.” Id. at 10-11.
The marks’ meaning and commercial impression were next considered. After setting forth dictionary definitions for “small,” “big” and “win,” the Board cited Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005), for the proposition that when the first term in a mark is arbitrary, it generally is prominent and the dominant term of the mark. Sugar Free Specialties at 13. In this case, however, “SMALL” or “BIG” were “more common and less distinctive” adjectives, resulting in WINS or WIN being the “strong distinctive term applied to the goods” for the Board’s analysis. Id. at 13.
The applicant argued the marks were not similar and had various alternatives in meaning due to the number of different definitions for the terms or the marks: The cited mark could mean large victory, “but it could also mean pretentious victories, chief victories or magnanimous victories … SMALL WINS could mean little victories, or it could mean petty victories, weak victories or inconsequential victories,” Id. at 14, and due to such variations the marks were not confusingly similar.
The USPTO examining attorney argued the marks were “not that different,” despite their antonymic prefixes. Instead, the marks were “perhaps apposite to the degree of the win,” with each mark describing a degree of a win, the cited BIG WIN mark being “the sum of [the] applicant’s mark … small wins equal a big win,” and that both marks had a similar commercial impression, with each connoting a win. Id. at 15.
The Board followed the examining attorney’s reasoning finding consumers “more likely” to give positive meanings and commercial attributes to the marks, and that SMALL WINS candies could be viewed “as a line extension” of BIG WIN candies “offered by the same company.” Id. at 15-16.
In sum, the Board found that the antonymic prefixes “SMALL” and “BIG” when used in SMALL WINS and BIG WIN were insufficient to differentiate the marks.
The takeaway: Despite marks being dissimilar at first blush due to them being antonyms, study them closely using the DuPont likelihood-of-confusion factors to better determine their registrability.
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