Overall Commercial Impression – Characters & Other Designs

On July 23, 2018, the Trademark Trial & Appeal Board (TTAB) issued a precedential opinion regarding the relevance of the overall commercial impression of a trademark in a likelihood of confusion analysis. In the case of In re Peace Love World Live, LLC (Serial No. 86705287), the TTAB addressed whether the trademark “I LOVE YOU” for bracelets would likely cause confusion with the pre-existing trademark “I LUV U” for jewelry, including necklaces, bracelets, rings, charms, pendants, and earrings. The United States Patent and Trademark Office’s (USPTO) Trademark Examining Attorney refused the registration of “I LOVE YOU” under Section 2(d) of the Trademark Act, citing potential confusion with the existing “I LUV U” mark. Peace Love World Live, LLC appealed this decision to the TTAB.

The primary issue in this case centered on the overall commercial impression of the trademarks and how this factor impacts the likelihood of confusion among consumers. The TTAB’s analysis involved several key considerations, including the similarity of the marks, the nature of the goods, and the relevant trade channels.

The TTAB began by examining the similarity between the marks “I LOVE YOU” and “I LUV U.” Both marks share the same structure, sound alike, convey the same meaning, and create a similar commercial impression. The slight differences in spelling between “LOVE” and “LUV,” and “YOU” and “U,” were considered insufficient to meaningfully distinguish the marks. The Board emphasized that the phonetic similarity and the conveyed message of a term of endearment were nearly identical. The TTAB referenced prior decisions where minor spelling variations did not outweigh the overall similarity in commercial impression, highlighting that such differences are often not enough to avoid consumer confusion.

The TTAB then considered the nature of the goods and their trade channels. Both the applicant’s and the registrant’s goods included bracelets, which are identical. This overlap means that the goods travel through the same trade channels and reach the same class of purchasers. When goods are identical, the likelihood of confusion increases because consumers may assume the goods originate from the same source. The TTAB noted that in cases where the goods are legally identical, the degree of similarity between the marks necessary to establish a likelihood of confusion is reduced.

The Board also reviewed the evidence of third-party registrations submitted by the applicant, which consisted of various iterations of “I LOVE YOU” for jewelry. These registrations were intended to show that the consuming public is accustomed to seeing similar marks for jewelry, thereby reducing the likelihood of confusion. However, the TTAB gave little weight to this argument. The presence of third-party registrations does not necessarily diminish the distinctiveness of the registrant’s mark or mitigate the likelihood of confusion, particularly when the marks at issue are so similar.

Furthermore, the TTAB examined whether the phrase “I LOVE YOU” functions as a trademark or if it is merely ornamental. The applicant argued that its mark comprised not only the words “I LOVE YOU” but also the specific shape and look of the letters as they appeared on the bracelets, suggesting that this unique presentation distinguished the mark. However, since the application was for a standard character mark, it covered the words themselves without any specific design or stylization. The TTAB found that the phrase “I LOVE YOU” as used on the bracelets was likely to be perceived as a common, decorative expression rather than an indicator of source. The widespread use of the phrase “I LOVE YOU” in the marketplace for jewelry reinforced its ornamental nature, making it less likely to be seen as a trademark.

In balancing all the relevant factors, the TTAB concluded that the similarities in the marks’ overall commercial impression, combined with the identical nature of the goods and their trade channels, outweighed any minor differences in spelling or stylization. The TTAB affirmed the refusal to register the applicant’s mark “I LOVE YOU,” finding that it was likely to cause confusion with the registered mark “I LUV U.”

This decision provides several important lessons in trademark law. It underscores the critical importance of the overall commercial impression in determining the likelihood of confusion. The commercial impression is how the trademark is perceived by the average consumer in the marketplace, and even slight differences in spelling or stylization may not be enough to distinguish marks if they convey the same meaning and sound alike. The TTAB’s emphasis on commercial impression demonstrates that the context in which the trademarks are used and perceived is crucial in evaluating potential confusion.

The decision also highlights that when goods are identical and share the same trade channels, the likelihood of confusion is heightened. Trademark owners must be vigilant in ensuring that their marks are distinctive enough to avoid confusion with existing marks, especially when the goods are closely related.

Additionally, the case illustrates that common, decorative phrases used on products are less likely to function as trademarks unless they have acquired distinctiveness or are presented in a unique manner that consumers recognize as a source identifier. Simply having a popular or well-recognized phrase does not automatically qualify it as a trademark if it is used in an ornamental or decorative manner.

In summary, the TTAB’s decision in In re Peace Love World Live, LLC reinforces the nuanced approach required in trademark disputes, emphasizing the importance of the overall commercial impression and the context in which the marks are used. This case serves as a valuable reference for trademark owners and practitioners in understanding how to evaluate the likelihood of confusion and the distinctiveness of marks in the marketplace. It demonstrates the need for a thorough analysis of all relevant factors and highlights the significance of how consumers perceive and remember trademarks in their purchasing decisions.

Share This Story, Choose Your Platform!