Wenderoth Wins on Appeal at Trademark Board in Rare Likelihood of Confusion Decision

August 1, 2017

In In re Toell Co., Ltd., U.S. Application Serial No. 86/888,544 (TTAB August 1, 2017), the Wenderoth trademark team appealed multiple Section 2(d) likelihood of confusion refusals to register “PURE HAWAIIAN WATER & Design” for drinking water in light of prior and multiple third-party registrations for “HAWAII WATER & Design” and “PURE HAWAIIAN” in standard characters, both for drinking water. Wenderoth successfully argued to the Trademark Trial and Appeal Board (TTAB) that although the involved goods, trade channels, and consumers were legally identical and the marks themselves were highly similar, the literal portions of the cited marks were inherently or conceptually weak, such that marketplace confusion would be improbable. Toell is a rare decision wherein the TTAB found consumer confusion unlikely based on only one of the thirteen likelihood of confusion factors as laid out in the seminal In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) which established the USPTO’s likelihood of confusion test. The TTAB largely affirms Examiner refusals under Section 2(d): In 2016, their affirmance rate for likelihood of confusion refusals was 91.5%. Toell Co. Ltd. produces the popular “Shinano-Yusui” drinking water from the Japanese Northern Alps as well as its “PURE HAWAIIAN” brand water sourced in Hawaii.

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