United States: 'Sophisticated? Maybe.' Says TTAB

Trademark Battle on Accura v. Acura Settles on Sophistication of Customers

In determining whether a trademark can be registered, the foundational question before the U.S. Patent and Trademark Office's (USPTO) examiner is whether an applied-for mark is likely to cause confusion in the marketplace.

And, as I have previously noted in articles in this space, when the USPTO's Trademark Trial and Appeal Board (TTAB) looks to rule in a case where a petitioner is claiming likelihood of confusion, the board often relies on the factors first set out in the touchstone decision, In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).

That 1973 decision presented an array of factors on which a determination of likelihood of confusion can rest. Seven of those factors are apposite in most cases, and readers may already know them, but to quickly recap, they include: (1) the similarity of the parties' marks; (2) the similarity of the parties' likely to continue channels of trade; (3) the parties' goods/services; (4) the strength of the plaintiff's mark; (5) similar third-party marks; (6) any actual consumer confusion, and (7) the sophistication of the parties' consumers.

The DuPont factors are not used as a rigid scorecard, and one factor may prevail over the others in any given circumstance. The first three listed above can be determined relatively easily, although nuances in argument do of course emerge. The fourth and fifth require informed judgment, and can present difficulties. The sixth in particular tends to receive short shrift.

But it's the seventh of these — resting on the presumed sophistication of consumers — that makes the TTAB's recent decision in In re AccuraScience, LLC, Serial Nos. 86/158,955 and 86/158,968 (June 15, 2015) [not precedential] that much more interesting.

In this case, the USPTO's examining attorney had refused to register the mark AccuraScience, in standard character and design form, for "DNA analysis services for scientific research purposes." The examiner felt that these marks were likely to cause confusion with Acura Pharmaceuticals for "pharmaceutical research and development services." The applicant appealed the examiner's refusal and the board overruled the examiner.

The TTAB began its analysis by considering the fourth factor from DuPont: namely, the strength of the registered mark. The board explained that Acura suggested that the registrant's services were accurate and therefore that the registrant's mark was somewhat suggestive or descriptive of a desired characteristic of its services. Correspondingly, the board noted, the mark could be seen as relatively weak. Nevertheless, it felt, the mark was still entitled to protection because it was federally registered. Next, the board considered the third factor, finding that DNA sequencing and analysis related to pharmaceutical research and development services were similar.

The board then analyzed the first factor — the similarity of the parties' marks — holding that the marks were obviously similar in their respective first portions, and that there was no evidence presented by the applicant that Accura and Acura would be pronounced differently.

With that, however, the board held that when the parties' marks were viewed as a whole, they were much less similar. It felt that AccuraScience connotes accurate science or accuracy in scientific results, whereas by contrast, Acura Pharmaceuticals connotes accurate pharmaceutical research or formulation. While these connotations are similar, the board felt, they suggest different results, concluding that the parties' marks were only somewhat more similar than dissimilar in appearance, sound, meaning, and overall commercial impression. In addition, the board held that the applicant's design mark differed more strongly from the marks in the cited registration and also more strongly connoted accurate science. In sum, the board found that the first factor weighed only somewhat in favor of a likelihood of confusion.

The most interesting aspect of the board's analysis was with respect to the seventh factor: the sophistication of the respective parties' consumers, whom the board felt were not ordinary. The primary purchasers of both parties' services are companies involved in the pharmaceutical and biotechnology industries, which the board felt by definition meant that all of the parties' customers would be quite sophisticated.

Not often does the sophistication of the parties' consumers' argument make all the difference in a trademark registration, but it clearly did here. The board explained that although it is often observed that customers who are sophisticated in a particular field are not necessarily immune from source confusion, in this case the highly technical and sophisticated nature of the respective parties' services compelled it to find that purchasers would exercise a high degree of care and would likely notice the differences between the parties' marks.

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