Recent Trademark Rulings on Trademark Deceptiveness and Confusion
All are invited to attend our weekly SoCal IP Institute meeting on Monday, February 22, 2021 a 1:00 pm Pacific. Due to the Covid-19 situation the meeting will be conducted online via video conference. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 12:00 pm Monday to obtain a link to the video conference.
We will discuss the following trademark issues.
When is a trademark deceptively misdescriptive?
The Court of Appeals for the Federal Circuit has articulated the following test for whether a mark consists of or comprises deceptive matter:
(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?
(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
(3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?
The Trademark Trial and Appeal Board (TTAB) recently evaluated whether CAVIAR & CASHMERE is registrable when used with “non medicated skin care and related personal care and cosmetic products.” Is this mark deceptive? In re Chase Investments, Inc., Serial No. 88042209 (February 11, 2021) [not precedential]
When is confusion between two marks used with the same kind of product likely? Is a shared syllable enough when a mark is famous?
TINDER is a well known dating app protected by trademark registrations. A trademark application was filed for BEENDER for a dating app. After the trademark examiner approved the application for BEENDER, it was published for opposition. TINDER opposed, asserting a likelihood of confusion. What do you think happened? As to confusion, do you think an app called BEENDER for dating would be offered by Match’s TINDER? Was the outcome more about the BEENDER applicant representing himself in the opposition? Match Group, LLC v. Pooria Shahin, Opposition No. 91241077 (February 11, 2021) [not precedential]