PCH Prevails in Rare Reversal of Examiner’s Refusal to Register Trademark on Likelihood of Confusion Grounds

By: Michael Chesal, Founding Member of the Firm

It’s rare to have a client willing to appeal a refusal to register a mark at the USPTO. It’s even more rare to prevail on appeal, as the TTAB historically affirms about 90% of refusals based on likelihood of confusion.

Therefore, the TTAB’s reversal in In re Joe Lo Enterprises, Inc. was indeed a rare occurrence.

In Joe Lo, the Applicant sought to register the mark LIVE ANABOLIC for dietary supplements.

The Examiner refused registration under Section 2(d) of the Trademark Act on the ground that Applicant’s applied-for mark so resembles the mark LIVE (stylized), also for dietary supplements, as to be likely to cause confusion.

Strength of the Mark

On appeal, the Applicant, citing to about 14 third-party users of marks containing the term LIVE, argued that “[c]onsumers are inundated with LIVE-formative marks when they seek these products, accustoming them to differentiating between LIVE-formative marks by focusing on even minor differences.” Applicant also argued that the cited mark is inherently weak because the term LIVE is the subject of a host of third-party use-based registrations, all for use with dietary and nutritional supplements, and, commercially weak, arguing that each of those registered marks is currently in use in commerce.

Upon considering the third-party use, the TTAB concluded that the term LIVE is both conceptually and commercially weak when used in connection with dietary and nutritional supplements, resulting in consumers being educated to look for minute distinctions in LIVE-formative marks in the marketplace. As such, this factor weighed against a finding of a likelihood of confusion.

Comparison of the Marks

In its analysis comparing the marks, the TTAB reiterated that the term LIVE is highly suggestive and in common use in the supplements industry, and therefore, the scope of protection to which the mark in the cited registration is entitled is quite limited. Accordingly, the Board found that the addition of the term ANABOLIC to the term LIVE was sufficient to distinguish Applicant’s mark from the cited mark in sound, appearance, connotation and commercial impression. Thus, this factor also weighed against a finding of likelihood of confusion.

Comparison of the Goods and Comparison of the Channels of Trade, Classes of Consumers and Purchasing Conditions

These factors all weighed in favor of a finding of likelihood of confusion.

Conclusive Balancing of Factors

The Board determined that in this case, “the weakness of the term LIVE in the cited mark and the dissimilarity of Applicant’s and registrant’s marks are dispositive factors in our likelihood of confusion analysis.” Since those factors both weighed against a finding of likelihood of confusion, the refusal to register was thus reversed. Citing Odom’s Tenn. Pride Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d 2030, 2032 (Fed. Cir. 2010) (“[A] single DuPont factor may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the marks.”).

While appeals are rare and successful appeals are even more rare, they shouldn’t be counted out entirely if you believe an Examiner got it wrong. PCH proved that here.