How Conceptual Weakness and Mark Dissimilarity Overcome Identical Services at the TTAB

Background

The Ghost Agency, Inc. (“Applicant”) filed an application, seeking to register a stylized mark on the Principal Register for a variety of Class 35 services. These services included, in part, advertising services to create brand identity for others.

The Examining Attorney refused registration under Section 2(d) of the Trademark Act, citing a likelihood of confusion with Registration No. 6211578. The cited registration consists of the word "GHOST" in a stylized form, with no claim to color.

The cited services include "advertising and marketing services," which the Examining Attorney determined were legally identical to the services sought by the Applicant.

Following a final refusal, and a request for reconsideration was denied, the Applicant appealed.

How the Board Analyzed the DuPont Factors

DuPont #6: The Strength or Weakness of the Cited Mark

The Applicant’s primary offensive strategy involved attacking the conceptual strength of the cited mark. The Applicant argued that the term "GHOST" is "relatively weak because it is highly suggestive of a characteristic of the underlying services." Specifically, the Applicant explained that "it is very common for companies that provide white label services for others to use the word ‘ghost’ to refer to the anonymous nature of their services." The Applicant provided examples of common industry terms such as "ghostwriting," "ghost editing," "ghost singing," and "ghost kitchen" to demonstrate that "GHOST" informs consumers that the services are "meant to be white label services for others."

To support this argument, the Applicant introduced evidence from third-party websites defining "white label branding" in the context of digital marketing. The record indicated that a marketing agency might outsource services to an external team, rebrand the product, and resell it to clients "such that end consumers do not know about their involvement." Based on this, the Applicant contended that "the word ‘GHOST’ is therefore highly suggestive of a characteristic of the services offered under the Cited Mark."

The Applicant also submitted sixty-three third-party registrations for marks incorporating the term "GHOST." The Board, first discarded five registrations that were not based on use in commerce (registered under Sections 44(e) or 66(a) for less than five years) and two registrations that had been cancelled.

The Board also rejected registrations that were in International Class 35, but did not cover the same services, because "Applicant did not make of record any evidence that the non-identical goods or services of the third-party registrations are related or similar to those identified in the cited registration." The Board focused only on services "identical to or encompassed by the services identified in the cited registration."

After all the filtering process, the Board found only twelve relevant third-party registrations, including marks like GHOST SHERPA for marketing analysis, GHOST GIRL for e-mail blast campaigns, and GHOST GAMING for advertising services. Despite the reduction in number from sixty-three to twelve, the Board concluded that the record successfully showed "GHOST" is highly suggestive because "it brings to mind a feature or purpose of the services... to render advertising and marketing services for and in the name of another." Consequently, the Board ruled that the term is "conceptually weak" and entitled only to a narrow scope of protection.

DuPont #2 and #3: Similarity of the Services and Channels of Trade

In comparing the services, the Board found that the cited registration for "advertising and marketing services" was broad enough to encompass all of the Applicant’s more specific services, such as "digital marketing services" and "advertising agency services." Under the law, this makes the services "legally identical in-part."Because the services were found to be legally identical, the Board applied the legal presumption that these services "travel in the same channels of trade to the same class of purchasers." The Examining Attorney had provided additional third-party website evidence showing that these services often emanate from a single source, but the Board noted that the "respective identifications of services alone" were sufficient to sustain the presumption. These factors weighed heavily in favor of a finding of likelihood of confusion.

DuPont #1: Similarity or Dissimilarity of the Marks

The Applicant argued that its "highly stylized letter G" was evocative of a "power on" button symbol, imbuing the mark with a "modern, tech-savvy impression" that differentiated it from the cited mark. The Examining Attorney countered that the literal element "GHOST" remained the dominant portion and that the stylization was insufficient to prevent confusion.

However, the Board disagreed with both the Applicant and the Examining Attorney regarding the appearance of the cited mark. While the description of the cited mark claimed it was the word "GHOST," the Board stated: "The cited mark consists of letters all in lower case; the initial letter appears to us as a lowercase ‘q’, not a lowercase ‘g’. Thus, the mark makes the commercial impression of ‘Q HOST’."The Board noted that it is not bound by an applicant's description of a mark because "a mark’s meaning is based on the impression actually created by the mark in the minds of consumers." By interpreting the cited mark as "Q HOST," which suggests web hosting, the Board found that it engendered a significantly different commercial impression than the Applicant’s mark.

Even if the Board had accepted the cited mark as "GHOST," it concluded that the "distinctive stylizations of the marks cause them to look very different." The Applicant's mark included the additional term "AGENCY" and used clean, crisp lines and contrasting grey and red colors. The Board found that the shared "HOST" sound was not enough to overcome the visual and connotative differences. The Board ultimately determined that the differences in connotations,"Q HOST" versus "GHOST AGENCY," meant the marks engendered "very different commercial impressions."

Board's Decision

The Board reversed the refusal to register the Applicant’s mark under Section 2(d). In its balancing of the factors, the Board acknowledged that while the services and trade channels (factors two and three) weighed heavily in favor of confusion, the conceptual weakness of the term "GHOST" (factor six) and the visual dissimilarity of the marks (factor one) were more significant. The Board emphasized that the first DuPont factor alone may be dispositive. Because the marks were found to be visually and commercially dissimilar, the Board concluded that no likelihood of confusion existed.