How Distinctive Connotations and Conceptual Weakness Can Overcome a Section 2(d) Refusal

Even when goods are legally identical and trade channels are presumed to be the same, a Section 2(d) refusal can still be overcome. By demonstrating that the shared element of the marks is conceptually weak and suggestive within that specific industry, you can narrow its scope of protection, allowing for the coexistence of marks that share that element but differ in their overall commercial impression.

Background

Applicant, Genuine Risk, filed an application, seeking registration of the standard character mark GOOD TIMES for bourbon in International Class 33. The Applicant claimed ownership of a prior registration, CASA GOOD TIMES, for a broader range of alcoholic beverages.

The Trademark Examining Attorney refused registration under Section 2(d), asserting a likelihood of confusion with five existing registrations. These cited marks included:

• Registration No. 4491880: GOODE TIMES GUARANTEED for alcoholic beverages except beers;
• Registration No. 4760521: LET THE GOOD TIMES ROLL for distilled spirits;
• Registration No. 5499622: WE GROW GOOD TIMES for alcoholic beverages and distilled spirits;
• Registration No. 6202224: GUARD THE GOOD TIMES for whiskey; and

• Registration No. 6181713: for distilled spirits; vodka;

The Applicant appealed the final refusal to the Trademark Trial and Appeal Board. While the initial office action had cited other registrations, those registrations were subsequently canceled or had the relevant classes deleted, rendering them irrelevant on appeal.

How the Board Analyzed the DuPont Factors

DuPont #2: Similarity or Dissimilarity of the Goods

The broad identifications in each of the five cited registrations (e.g., alcoholic beverages, except beers, distilled spirits, and "whiskey) encompassed the Applicant’s more narrowly defined goods: bourbon, which was legally defined as "a whiskey distilled from a mash made up of not less than 51 percent corn plus malt and rye." Because the cited registrations encompassed the Applicant's specific goods, the Board concluded that the goods were legally identical. Consequently, the Board found that this factor weighed strongly in favor of a likelihood of confusion.

DuPont #3: Similarity of Trade Channels and Classes of Purchasers

When goods are legally identical, it must be presumed that they travel through the same channels of trade and are offered to the same classes of consumers. Because the Board found no evidence in the record to rebut this presumption, this third DuPont factor also weighed heavily in favor of a likelihood of confusion.

DuPont #6: Strength of the Cited Marks

Conceptual strength

Because each of the cited marks issued on the Principal Register without a claim of acquired distinctiveness, they are presumed to be inherently distinctive for their respective goods. However, the Federal Circuit has held that if a mark, or an element of a mark, is commonly adopted by multiple different registrants, it may indicate that the common element possesses some conceptual weakness as a source identifier.

The Applicant argued that the phrase "GOOD TIMES" is suggestive and inherently weak for alcohol. Interestingly, the Applicant did not submit any new third-party registrations to support this argument. Instead, it pointed to the five cited registrations themselves, along with its own CASA GOOD TIMES registration. The Applicant asserted that these registrations alone proved the wording "GOOD TIMES" was conceptually weak and diluted because it merely suggested the merriment consumers anticipate while imbibing alcoholic beverages.

The Board agreed with this logic. It noted that the existence of multiple "GOOD TIMES" marks on the register for alcoholic beverages, each combined with different additional terms, demonstrated that both the USPTO and the trademark owners believe these marks could coexist if they possessed even minimal differences. Accordingly, the Board found that the registrations of record demonstrated that the wording "GOOD TIMES," when used in association with alcoholic beverages, was conceptually weak, thereby undermining its strength as an indicator of a single source.

Commercial strength

To assess the commercial strength of the cited marks, the Board considered the number and nature of similar marks in use on similar goods.

Here, the Applicant had not submitted any evidence of third-party marketplace use of marks identical or similar to the cited marks. Furthermore, the third-party registrations discussed above were insufficient on their own to establish that the relevant consuming public had been exposed to widespread use of similar marks in connection with alcoholic beverages.

Nevertheless, in light of its conceptual weakness, the Board found the "GOOD TIMES" component of each cited mark to have a limited scope of protection. Thus, the Board concluded that the sixth DuPont factor favored a finding that confusion was not likely.

DuPont #1: Similarity or Dissimilarity of the Marks

The Examining Attorney's position on the first DuPont factor centered on the shared wording "GOOD TIMES" and the resulting commercial impression. He contended that the marks were highly similar on their face and that any minor differences, such as additional words in the cited registrations, did not detract from the overall similarity. Furthermore, the Examining Attorney argued that because the marks all featured the "GOOD TIMES" phrasing, they conveyed similar meanings and overall commercial impressions to prospective purchasers.

The Examining Attorney also emphasized that consumers would likely perceive the Applicant’s mark, GOOD TIMES, as an abbreviated version of the longer cited marks, such as LET THE GOOD TIMES ROLL or GOOD TIMES GUARANTEED. The Examining Attorney believed that his argument was bolstered by the fact that the goods involved were legally identical. The Examining Attorney maintained that when goods are identical, the degree of similarity required between the marks to find a likelihood of confusion is less than if the goods were diverse or unrelated.

Although the marks shared visual and aural similarities, the Board found that they were sufficiently dissimilar in structure, meaning, and overall commercial impression to weigh against a finding of a likelihood of confusion.

Specifically, the Board rejected the Examining Attorney's "short-form" argument, stating it was unlikely that consumers would view the Applicant’s mark as an abbreviated version of the cited marks. The Board emphasized that the cited marks were not merely "GOOD TIMES," but rather distinctive phrases that conveyed specific sentiments absent from the Applicant’s mark. For example, the Board noted that GUARD THE GOOD TIMES connoted protecting an experience, while LET THE GOOD TIMES ROLL suggested continuing one. These distinctive connotations created enough distance between the marks to outweigh the Examining Attorney's argument that the legal identity of the goods lowered the standard for finding similarity.

Board’s Decision

Ultimately, the TTAB reversed the Section 2(d) refusal to register the Applicant’s mark, GOOD TIMES. The Board concluded that while the second and third DuPont factors (identity of goods and trade channels) weighed in favor of a likelihood of confusion, the first and sixth factors (similarity of the marks and commercial/conceptual strength) were pivotal and dispositive.

The Board found that the conceptual weakness of the term "GOOD TIMES" in the context of alcoholic beverages, combined with the structural and connotative differences between the Applicant's mark and the cited phrases, made a likelihood of confusion unlikely.

What I love about digging into TTAB decisions like this one is how they remind us that trademark law isn't a series of rigid, absolute boxes. Even when the first few DuPont factors feel like a brick wall, there is always room for nuance and creative advocacy.

Here are two lessons I learned from this case.

1. Leverage "Dead" Marks to Prove a Historical Trend

This case features a footnote (footnote 11) that made me pause: the Board explicitly acknowledged that while several cited registrations had been canceled, they still served as evidence of a historical pattern.

Using a timeline of dead registrations allows us to show that the USPTO has historically and consistently allowed multiple variations of a term to coexist. It proves the term is woven into the ordinary parlance of the industry.

The Board doesn't seem consistent about this. In In re Jutiso Inc., at least one of Applicant’s third-party registrations was eliminated without consideration because that Board considered dead or cancelled mark having no probative value at all.

2. Focus on What Your Client’s Mark Lacks

When responding to a 2(d) refusal under the first DuPont factor, our natural instinct is to fiercely argue what makes our client's mark different. We focus on what is there. This case taught me to completely flip that script and focus on what is not there.

The Board focused heavily on the specific "vibes" and emotional hooks of the cited marks. GUARD THE GOOD TIMES connotes protection; LET THE GOOD TIMES ROLL connotes celebration and continuity. The Applicant’s mark, on the other hand, was just the plain, unadorned wording: GOOD TIMES. It completely lacked those specific sentiments, imagery, or emotional hooks. The simplicity of the Applicant's mark, specifically because it lacked the distinct connotations of the other marks, turned out to be an incredibly powerful way to establish an entirely different commercial impression.

This strategy is especially useful when an Examiner fixates on the shared wording, brushes off the rest of the phrase, and claims the additions are just "minor differences." They try to "simplify" the argument by isolating the common denominator. They love using the "short form" argument, effectively reducing marks to their shared parts. See how they tried to argue that consumers would shorten DUNDER MIFFIN to MIFF.

Do not let them minimize those distinctions. Take a step back and advocate for the phrase as an organic whole. In this case, those exact "minor differences" were the engine driving the Board's decision. The Board recognized that those extra words created distinct phrase characters completely absent from the Applicant's mark.

When an Examiner downplays the differences, that’s our cue to show that the extra words aren't just fluff. They change the connotation and the entire commercial impression. By doing that, you can successfully establish dissimilarity, even when the underlying goods are legally identical.

What do you think? Have you had success using dead registrations to show historical office trends?