[This guest post was authored by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. The applicant, Sulde Global Inc., sought to register the mark HYDROPIK, in standard characters, for goods "for cleaning teeth and gums using high pressure water for home use; Water apparatus for cleaning teeth and gums for home use." If I told you that there are at least three registrations on the Principal Register for the mark WATERPIK in standard character and stylized form, for "oral irrigators" and other oral healthcare products, what do you think happened next? That's right, Examining Attorney Mark Sparacino rejected the application under Section 2(d). How do you think the appeal came out? Was Applicant able to dislodge its application from the TTAB's teeth? In re Sulde Global Inc., Serial No. 88/326,285 (Nov. 24, 2020) [not precedential] (Opinion by Judge Mark Lebow).
The Board walked through several of the DuPont factors, but as Applicant conceded that the goods in the application were legally identical to the cited goods, the Board focused its analysis on Applicant's arguments regarding the similarity of the marks, the "purchasing conditions," "fame," and the presence of third-party marks.
Similarity of Marks - The Board did not have much trouble with this DuPont factor, finding that the Applicant "flounder[ed]" (do flounders have teeth?) by focusing only on the registered stylized mark. Instead, the Applicant should have focused on the standard character registrations or recognized that "Applicant's standard character HYDROPIK mark may appear in any font, including the same font as the Registrant's stylized mark." Once properly analyzed, the Board relied in part on the Examining Attorney's evidence showing that the word "hydro," especially as a prefix, means "water." With that, it found that "when considered in their entireties, the marks HYDROPIK and WATERPIK have the same meaning and commercial impression, especially because they are used for legally identical goods which 'pick' with water pressure."
Purchasing Conditions - Applicant attempted to argue that the purchasers of the Registrant's and Applicant's goods are "sophisticated" because the goods are "extremely expensive." Unfortunately for Applicant, it provided no evidence as to the price of its own goods. But ultimately, even if submitted, the Board likely would have found such evidence irrelevant as "there are no price point limitations in the parties' respective identifications of goods." Ultimately, the Board found this factor to be neutral.
Fame - With this factor, it's important for practitioners to remember that the Board has access to the entire examination record and the Examining Attorney is permitted to submit a brief. Applicant argued that there was no evidence in the record on fame or commercial strength. However, although it's not common for Examining Attorneys to submit evidence of commercial strength or fame, here the Examining Attorney provided numerous citations to articles and reviews, which included such glistening quotes as "Waterpik is the most famous brand of oral irrigators." Even with such quotes, the Board found that this factor only slightly favored a finding of likelihood of confusion.
Third-Party Marks - Here, Applicant, like many applicants before it, argued that the presence of several other third-party marks on the Principal Register means the registered WATERPIK mark is inherently weak and should be given only narrow protection. But as the TTAB routinely holds, it found the "third-party registrations identified by Applicant have limited probative value and are insufficient to show that Registrant's marks considered in their entireties are weak." Not only did these registrations not evidence actual use in commerce, the Board found that marks only showed the PIC-formative might be weak, but that weakness was irrelevant when the Applicant simply replaced WATER with HYDRO.
Conclusion - The Board upheld the refusal.
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Originally Published by Wolf Greenfield, December 2020
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