Proving that history repeats itself, the TTAB recently decided a case that is strongly reminiscent of a matter we handled several years ago. In 2005 we defeated a challenge by Missiontrek Ltd. Co. to the registration of the software mark ONFOLIO, owned by our client Onfolio, Inc. Missiontrek claimed that ONFOLIO was confusingly similar to its previously-registered software mark CARTAGIO.
Instead of filing an answer to this challenge, we moved for summary judgment, claiming that the marks were so different that no facts developed in discovery or at trial could lead to a finding of confusing similarity. Although the TTAB rarely decides such issues without a factual record, it did so in this case, agreeing with us that “the dissimilarity of the marks in their entireties substantially outweighs any other relevant factors and is dispositive of the issue of likelihood of confusion.” Missiontrek Ltd. Co. v. Onfolio, Inc., 80 USPQ.2d 1381, 1383 (TTAB 2005) (PDF). The Board accepted our arguments that the only common element of the two marks was the suffix “IO,” that this is an ordinary English suffix found in numerous registered software marks, and that CARTAGIO and ONFOLIO were otherwise entirely different in appearance, sound and meaning.
Missiontrek tried to support its case by submitting a “survey.” This was actually just a series of e-mails sent by the company’s president to 42 persons, only eight of whom responded. According to Missiontrek, two of these eight people said that the marks were confusingly similar, leading it to proclaim that “25%” of the survey respondents supported its position. The Board quickly discounted this evidence, noting that the true percentage of respondents was two out of 42, and agreeing with our contentions that the survey was prepared and administered by a biased party, was not based on recognized survey techniques, and was not analyzed in a statistically meaningful way.
Moving ahead to 2010, we note that the Board has now decided the case of Bridgestone Firestone North American Tire, LLC and Bridgestone Corporation v. Federal Corporation, Opposition No. 91168556 (TTAB February 24, 2010) (PDF), finding no likelihood of confusion between Bridgestone’s tire marks POTENZA and TURANZA and the applicant’s tire mark MILANZA. As in Missiontrek, Bridgestone claimed that the marks at issue were confusingly similar because they shared the same suffix (in this case, “NZA”), and tried to support this claim with a survey. As in Missiontrek, the applicant argued that the suffix appeared in other registered marks. As in Missiontrek, the Board rejected the likelihood of confusion claim, finding that “the dissimilarity of the marks simply outweighs all the other factors,” and also finding that Bridgestone’s survey was too flawed in its methodology to be probative.
The one significant difference from Missiontrek is that Bridgestone claimed to own a family of marks ending in “NZA,” and that this alleged family made the suffix distinctive of its products. However, the Board held that Bridgestone had failed to prove the existence of an “NZA” family, since it had never emphasized the suffix in its advertising, and had always used the marks with the term BRIDGESTONE, which was the real focus of its marketing.
There are two lessons to be gleaned by comparing these cases. First, marks that share only a common suffix are unlikely to be deemed confusingly similar. Second, those who forget the past are doomed to repeat it.