For likelihood of confusion purposes, a mark's strength “varies along a spectrum from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)).

The strength of a trademark may be attenuated by the number and nature of similar marks in use on similar goods and services. Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016); 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 (distinctiveness) and its marketplace strength . . . .”).

Evidence that a mark, or a segment of a mark, is used extensively in commerce by a number of third parties may undermine its commercial strength, as the consuming public may have become familiar with a multiplicity of the same or similar marks, and may have learned to distinguish them based on minor differences. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005).

UNFORGETTABLE TRIPS

The TTAB recently reversed a refusal to register the UNFORGETTABLE TRIPS mark for “travel agency services, namely, making reservations and bookings for transportation” (with the word TRIPS disclaimed) in view of the registered UNFORGETTABLE HONEYMOONS for identical services. In re Brunvoll and Assocs. LLC, Ser. No. 90526989 (TTAB Jan. 31, 2024).

The record included dictionary definitions of “unforgettable” that the TTAB found were suggestive for travel agency services, which indicated “at least some conceptual weakness.”

In addition, the record also included six third-party, use-based UNFORGETTABLE-formative registrations for travel-related services, printouts from 11 internet web pages for travel agencies using the word UNFORGETTABLE, and a Dun & Bradstreet search report with 23 business entries with UNFORGETTABLE in their names in the “travel and reservation services” industry.

Evidence in the form of listings and advertisements, such as in yellow and white page phone book listings, triggers a presumption that a third-party service mark is in fact in use by third-parties, possibly making a registrant's mark weak.

Accordingly, the TTAB found that “UNFORGETTABLE-formative marks are both conceptually and commercially weak for travel agency services and, therefore, are entitled to a narrow scope of protection.”

            In view of the weakness of the term UNFORGETTABLE, despite its placement at the beginning of the respective marks, we find that the addition of the differing terms TRIPS and HONEYMOONS is sufficient to distinguish them. Even though the additional words HONEYMOONS and TRIPS are merely descriptive and disclaimed, we cannot ignore them in our analysis. In re Detroit Athletic Co., 128 USPQ2d at 1050; Shen Mfg. v. Ritz Hotel, Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1355 (Fed. Cir. 2004) (“The disclaimed elements of a mark, however, are relevant to the assessment of similarity. This is so because confusion is evaluated from the perspective of the purchasing public, which is not aware that certain words or phrases have been disclaimed.” (internal citation omitted)). While the word UNFORGETTABLE would engender a similar meaning and commercial impression, the other wording in each mark adds additional meaning and commercial impression that distinguishes them. See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (affirming Board's holding that contemporaneous use of applicant's CAPITAL CITY BANK marks for banking and financial services, and opposer's CITIBANK marks for banking and financial services, would not likely cause confusion, based, in part, on findings that the phrase “City Bank” was frequently used in the banking industry); Shen Mfg. Co. v. Ritz Hotel Ltd., 73 USPQ2d at 1356-57 (reversing Board's holding that contemporaneous use of THE RITZ KIDS and RITZ was likely to cause confusion, because, inter alia, THE RITZ KIDS created a different commercial impression). We agree with Applicant that the different trailing words, HONEYMOONS and TRIPS, with dissimilar spellings and lengths add to the dissimilarity in appearance and sound.

Balancing the factors, “[t]he ubiquity of UNFORGETTABLE in the travel industry and the additional different wording present in Applicant's mark outweigh the similarities between the services, trade channels, and consumers.”

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