Trademarks registered on the Supplemental Register can be cited by the U.S. Patent and Trademark Office under Section 2(d) to refuse registration of a subsequent mark that is “substantially identical” for goods and services that are “substantially similar.” In re Central Soya Co., Inc., 220 USPQ 914, 917 (TTAB 1984) (noting “the scope of protection extended to these [descriptive] marks [registered on the Supplemental Register] has been limited to the substantially identical notation … for substantially similar goods” in reversing Section 2(d) refusal to register POSADA on the Principal Register for Mexican style prepared frozen enchiladas based on the cited mark LA POSADA on the Supplemental Register for lodging and restaurant services); In re Tex, Instruments Inc., 193 USPQ 678, 679-80 (TTAB 1976) (registration of COPPERCLAD on the Supplemental Register for copper coated electrodes did not bar registration of COPPER CLAD on the Principal Register for copper wire under Section 2(d)).

For example, the Federal Circuit has affirmed a Section 2(d) refusal to register the mark ROPELOK on the Principal Register based on the cited registration of ROPELOCK on the Supplemental Register because the marks were almost identical and the identified goods consisted of “closely related safety equipment.” In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“It is not material whether or not registration on the Supplemental Register implies that there is a degree of descriptiveness to that mark”).

Also, the Federal Circuit affirmed a Section 2(d) refusal of ERASE based on a cited STAIN ERASER mark on the Supplemental Register only because the goods were identical (stain removers), and also because the marks “ERASE and ERASER [were] virtually indistinguishable and the addition of the descriptive word STAIN to ERASER [was] insufficient to distinguish between the marks as a whole and to avoid confusion.” In re The Clorox Co., 578 F.2d 305, 198 USPQ 337, 340-41 (CCPA 1978).

However, as stated by the TTAB in In re Hunke & Jochheim, 185 USPQ 188, 189 (TTAB 1975):

It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights. The essence of all we have said is that in the former case there is not the possibility of confusion that exists in the latter case.

Thus, the scope of protection of a mark on the Supplemental Register may be more limited when it falls on the weaker end of the spectrum.

HOMEPRO Formative Marks

Recently, the TTAB reversed a Section 2(d) refusal of the application for HPB HOMEPRO BRANDS and design (with “brands” disclaimed) composite mark, for “Brand concept and brand development services for corporate and individual clients; Providing advertising and marketing consulting services to corporate and individual clients; Website traffic optimization for the websites of corporate and individual clients,” in view of the word mark HOMEPRO MATCH, registered on the Supplemental Register, for “Business and consumer services, namely, providing a website promoting, advertising and marketing, via the website, third party vendors and suppliers, and services and goods of third party vendors and suppliers in the field of contracting and home improvement, namely, home and commercial property construction, maintenance, renovation and repair; providing via the website a searchable online directory to consumers searching third party vendors and suppliers and goods and services of third party vendors and suppliers.” In re Brand3, Inc., Ser. No. 90483463 (TTAB Aug. 16, 2023).

            Both marks share the conceptually weak term HOMEPRO, but the similarities stop there. The other element consumers will take note of in Applicant's mark is its dominant element, the apparently arbitrary acronym HPB. HPB appears center and above HOMEPRO BRAND in a much larger sans serif block font such that the wording HOMEPRO BRAND is much less dominant. For this reason, the boldness of HPB not only dominates Applicant's mark but also distinguishes it from the cited mark. As such, the marks are more dissimilar than similar overall in appearance, sound, connotation and commercial impression. See Jack Wolfskin, 116 USPQ2d at 1134 (acknowledging the fundamental rule that the marks must be considered in their entireties). In other words, the marks are not “substantially similar,” see Hunke & Jochheim, 185 USPQ at 189, and consumers will readily distinguish Applicant's mark with Registrant's mark.

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            Keeping in mind the relative weakness of the cited mark HOMEPRO MATCH registered on the Supplemental Register, the marks are so dissimilar overall in appearance, sound, connotation, and commercial impression so as to outweigh the in-part identical or closely related nature of the services. See Kellogg Co. v. Pack'em Enters., Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case, a single DuPont factor may not be dispositive.”).

Thus, the TTAB found confusion to be unlikely, but took pains to clarify that it was “not suggesting that a different likelihood of confusion standard applies to cited marks on the Supplemental Register” while acknowledging that the scope of protection may be more limited.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.