TTABlog test: can “NOJOKE” for electronic cigarette products be confused with “JOKER” for cigarette paper? – Trademark
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Republic Technologies opposed a trademark application NO KIDDING for “electronic cigarette liquid (e-liquid) composed of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges; electronic cigarettes and oral vaporizers for smokers”, claiming a risk of confusion with two trademarks listed below, for “cigarette paper”. The opponent argued that the common element JOKE in all the marks makes them similar in appearance and sound, and is central to their meanings and commercial impressions. She argued that the wares are related because they all fall within the category of “tobacco products”. How do you think that came out? Republic Technologies (NA), LLC v Vapewear, Inc.opposition n° 91253787 (April 26, 2022) [not
precedential] (Opinion of Judge Angela Lykos).
Property: The Board has concluded that the goods in issue are related because they are sold by the same retailers. In addition, 18 third-party registrations covering both product types have demonstrated that the affected products are of a type that can be sourced from a single source under a single brand. Moreover, the commercial channels overlap – convenience stores and service stations – and are sold to the same categories of consumers likely to exercise only ordinary care in their purchases.
Strength of opponent’s marks: The Council noted that, as with all tobacco products, federal law restricts cigarette paper advertising. With this in mind, the Board has considered the Opponent’s evidence of the use of the JOKER marks since 1975, the numerous retail outlets for its cigarette papers, trade show promotions and point-of-sale material . The Board, however, was unable to conclude that the JOKER marks “are at the high end of the fame or strength spectrum”. There was no evidence regarding the opponent’s sales and advertising expenditures in the United States, and the Board concluded that the ratings were “at the lower end of the spectrum and of ‘relatively modest’ strength.”
The board also concluded that the JOKER marks are inherently distinctive and granted them the “normal scope of protection” of distinctive marks.
Marks : The opponent argued that the marks “address the subject of a joke in different directions – JOKER in the affirmative and NO JOKE in the negative – but both evoke the same concept”, making the marks “associative terms”. Thus, consumers will perceive the applicant’s mark as an extension of the opponent’s product line.
The Council was not impressed. “The opponent’s arguments amount to an improper dissection of the marks.” When comparing the marks as a whole, the board found them to be dissimilar. The marks have “distinctly different commercial connotations and impressions”.
NOJOKE is a recognized expression that emphasizes the truth of something potentially unbelievable and communicates an air of seriousness. In contrast, Opposer’s stylized, composite JOKER marks give the impression of a court jester, a comically silly clown. Thus, despite their common associative term, the meanings of these marks and the impressions they give do not share any similarity.
The Council concluded that “[t]The distinct fanciful design features of the Opponent’s composite mark are dominant and further avoid a likelihood of confusion. The Commission therefore ruled that the first Du Pont factor weighed against a finding of likelihood of confusion.
Conclusion: Considering the first Du Pont was decisive, the Commission rejected the opposition.
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