There are two types of trademark strength: conceptual and commercial. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark's strength is measured both by its conceptual strength … and its marketplace strength ….”). See also Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 2023 USPQ2d 737, at *4 (Fed. Cir. 2023) (“There are two prongs of analysis under the sixth [du Pont] factor: conceptual strength and commercial strength.”).

Conceptual Strength

For conceptual strength, descriptive or highly suggestive trademarks are entitled to a narrower scope of protection—that is, less likely to generate confusion over source identification, than their more fanciful counterparts. Juice Generation, Inc. v. GS Enter., LLC, 794 F.2d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015).

Commercial Strength

Commercial strength of a mark, on the other hand, “may be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods traveling under the mark, and by the length of time those indicia of commercial awareness have been evident.” Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). When submitting sales and advertising figures as evidence of a trademark's commercial strength, “some context in which to place raw statistics” should be provided. Id., 293 F.3d 1367, 63 USPQ2d 1303, 1309. Other relevant factors include “length of use of the mark, market share, brand awareness, licensing activities, and variety of goods bearing the mark.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012).

Successful Business Not the Same

The TTAB recently noted in Hub Group, LLC v. SPL Group, Inc., Opposition No. 91263984 (TTAB Aug. 2, 2023) that “being a successful business does not by itself establish that any specific mark the business owns is commercially strong.”

The application seeking registration of SHIPHUB for “software as a service (SAAS) services featuring software for shipping management,” was opposed by Hub Group, LLC based on its prior use and registration of HUB GROUP, variations thereof and other HUB-formative marks for a variety logistics, shipping and transportation-related services and software.

“HUB” Conceptually Quite Weak for Shipping Services

The Opposer's HUB-formative marks were presumed to be inherently distinctive because they were registered on the Principal Register without a claim of acquired distinctiveness, and the Applicant had not sought to cancel the Opposer's marks for being merely descriptive. Nonetheless, the TTAB concluded that the Opposer's HUB-formative marks were “conceptually quite weak.”

The general and industry definitions of “hub,” uses of the term in patents and patent publications, and third-party registrations for marks containing “hub” are all consistent and corroborate each other. Combined, this evidence leaves no doubt that the shared “HUB” component of the parties' marks is highly suggestive of shipping management software, for two reasons. First, shipments often transit through “hubs.” Second, shipping software serves as a “hub” or focal point of shipping and logistics-related information.

The TTAB also noted that the third-party registrations also functioned essentially as a dictionary, showing how the term “HUB” is used in “ordinary parlance,” and “are relevant to the question of whether the shared segment – in this case, [“hub”] – has a commonly understood descriptive or suggestive meaning in the field and whether there is a crowded field of marks in use,” citing Spireon, 2023 USPQ2d 737, at *5, and Juice Generation, 115 USPQ2d at 1675.

The TTAB concluded that “the dictionary definitions, patent materials and third-party registrations show that Opposer's competitors in the shipping/logistics industry have a need to use the term ‘HUB.'”

Some Consumer Recognition, But Not Commercially Strong

In evaluating commercial strength, the TTAB noted that Opposer has used HUB GROUP for well over 30 years as its corporate name, and had “annual revenues for 2015-2020” that exceeded $3 billion each year. But these “impressive” annual revenues “are not tied in any way to any of Opposer's pleaded marks, much less HUB GROUP or HUBPRO specifically.”

Furthermore, there was voluminous evidence of third-party use evidence, including third-party registrations, Internet evidence, and third parties in the shipping/logistics industry with “HUB”-formative names have registered with the United States Department of Transportation (“DOT”).

            Weighing all of this evidence together, while we infer that Opposer's HUB GROUP mark likely enjoys some consumer recognition in the shipping and logistics fields generally because Opposer Hub Group is a very successful business, Applicant's evidence shows that consumers are exposed to many third party uses of HUB-formative marks and names in the shipping/logistics industry, including for shipping management and related software. . . . The record thus falls far short of establishing that HUB GROUP is famous, widely known or commercially strong for shipping software.

Thus, any commercial strength Opposer's HUB GROUP mark may enjoy for shipping and logistics services has been diluted by other uses of HUB-formative marks in the same or similar fields, including for shipping software.

The TTAB found that the “high degree of conceptual weakness” of “hub” for shipping and logistics-related goods and services was more significant than the commercial strength for the Opposer's HUB-formative marks, and thus only entitled to “a reduced scope of protection.”

Comparing the Marks

All of the marks at issue contain the term “HUB,” which the TTAB found to be conceptually weak and diluted.

Indeed, the term is registered by third parties for: freight transportation software (TRUCKHUB, Reg. No. 5654896); shipment processing and freight tracking software (HUBBOX, Reg. No. 5033889, shown to be in use at 48 TTABVUE 148-167); order and distribution management software (MASONHUB, Reg. No. 6102719, shown to be in use at 48 TTABVUE 85-125); shipping label and purchase order processing software (COMMERCEHUB, Reg. No. 2464992, shown to be in use at 48 TTABVUE 19-37); supply chain management software (GS1 US DATA HUB, Reg. No. 4532345); and shipment and delivery software (CAMPUSHUB, Reg. No. 2867029). It is also registered and appears to be widely used for a variety of shipment and logistics-related goods and services, as detailed above. Thus, we do not find confusion likely solely because the parties' marks share the weak term “HUB.”

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            In fact, notwithstanding that they share the weak term “HUB,” and look and sound similar to that extent, the marks look and sound fairly different overall. Opposer's marks begin with “HUB,” while Applicant's mark begins with “SHIP,” terms which do not look or sound alike in any way. This is significant because the first part of a mark is entitled to more weight in our analysis. . In re Detroit Athletic Co., 128 USPQ2d at 1049.

            More importantly, the marks convey different meanings and create different commercial impressions. As Opposer puts it, the HUB GROUP mark conveys a collection of affiliated “HUB” entities. 31 TTABVUE 7 (Hill Dec. ¶ 15) (“The name Hub Group was selected because the entity was to provide oversight over the different entities constituting the Hub Network.”). See also Mitchell Miller, P.C. v. Miller, 105 USPQ2d 1615, 1622 (TTAB 2013) (“We find that ‘LAW GROUP' is a generic designation for a law firm.”). The HUBPRO mark conveys a “professional” version of a hub-related product. By contrast, the focus of Applicant's mark is on its first term “SHIP,” with “HUB” indicating that Applicant's software is a focal point for shipment- related information. In other words, consumers encountering Opposer's marks will focus on the term “HUB” while consumers encountering Applicant's mark will focus on the term “SHIP.”

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            The bottom line is that because the only thing the marks have in common is the conceptually weak and diluted term “HUB,” confusion is unlikely. See e.g. Sure-Fit Prods. Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958) (finding no likelihood of confusion between SURE-FIT and RITE-FIT, both for slip covers, because the term “fit” is “eminently suitable for use in connection with goods such as ready-made slip covers … [u]nder these circumstances, we do not feel that appellant is entitled to the broad protection which it seeks”); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476-78 (TTAB 2014) (finding “that the mark PERKSPOT is sufficiently different from the marks PERKS and PERKSCARD to avoid a likelihood of confusion” even though the marks were used for legally identical services); Plus Prods. v. Natural Organics, Inc., 204 USPQ 773, 779-80 (TTAB 1979) (allowing registration of NATURE'S PLUS for vitamins despite prior registration of PLUS for vitamins given coexistence of a number of registrations containing PLUS for similar goods).

The TTAB further quoted Sure-Fit in noting that “where a party chooses a trademark which is inherently weak . . . . , his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.”

While the parties' goods and services are identical in-part, and travel in the same channels of trade to the same classes of consumers, the TTAB concluded that confusion is unlikely because the parties' marks share only the term “HUB,” which was both conceptually and commercially weak for shipping/logistics-related goods and services. Thus, the differences between the parties' marks are much more important than their similarities.

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