Procedural Pitfalls and the Dominance of Literal Elements Affirm 2(d) Refusal

Overview

This case is a TTAB precedent.

The Trademark Trial and Appeal Board (TTAB) issued a precedential opinion affirming the refusal to register a composite mark. The Board’s decision centered on two primary areas: procedural requirements for amending an identification of goods during an appeal and the substantive analysis of the DuPont factors.

• Procedural Stringency: The Board rejected the Applicant's attempt to amend its identification of goods within its appeal brief, citing a failure to follow proper procedure and a lack of "good cause."
• Dominance of Literal Elements: In the likelihood of confusion analysis, the Board emphasized that the word "OX" was the dominant feature of both marks, and the Applicant's design elements served only to reinforce that literal portion.

Background

The Applicant, Ox Paperboard, LLC, filed an application seeking to register OX for “Paper tubes and cores; paperboards used for protective packaging; and recycled paperboard” in International Class 16.

The Trademark Examining Attorney refused registration under Section 2(d) based on a likelihood of confusion with the registered mark OX BOX. The cited registration was for a standard character mark on the Principal Register, with the word "BOX" disclaimed. The cited mark covered "corrugated containers" in International Class 16 and "plastic and wooden containers for transportation of goods for commercial and industrial use" in International Class 20. Following the refusal, the Applicant appealed the decision to the Trademark Trial and Appeal Board.

DuPont #1: Similarity of the Marks

The Board analyzed the similarity of the marks in their entireties, considering appearance, sound, connotation, and commercial impression. The Applicant argued that the visual differences between its composite mark and the cited standard character mark were obvious. Specifically, the Applicant pointed to its stylized lettering and the design element of the ox head and shield, criticizing the Examining Attorney for focusing solely on the shared word "OX." The Applicant maintained that these design elements, paired with the additional word "BOX" in the cited registration, were sufficient to distinguish the marks.

However, the Board found the Applicant’s position unconvincing. While acknowledging that marks must be considered as a whole rather than dissected, the Board noted that it is entirely rational to accord more weight to a dominant feature. The Board ultimately agreed with the Examining Attorney that the word "OX" was the dominant portion of both marks. In the cited registration for "OX BOX," the word "BOX" was descriptive of the goods and had been disclaimed, leading the Board to conclude that it was less likely to make a significant impact on the minds of consumers. Consequently, "OX" was accorded greater weight.

Regarding the Applicant’s composite mark, the Board ruled that the literal portion "OX" was more likely to be impressed upon a purchaser’s memory than the design elements. In doing so, the Board applied the well-established principle that the literal portion of a mark is normally given greater weight because it is the element consumers use to call for the goods. The Board found that the design of the ox head was simply a pictorial representation of the word "OX." Instead of creating a separate commercial impression, the design actually reinforced the dominance of the literal element. Because both marks shared an identical literal element that was arbitrary in relation to the goods, the Board found them aurally similar and concluded that the marks were overall similar in sound, meaning, connotation, and commercial impression.

DuPont #2: Similarity and Relatedness of the Goods

To show the goods are related, the Examining Attorney provided extensive evidence from various business-to-consumer (B2C) and specialty websites demonstrating that the goods were complementary and sold by the same sources.

In reviewing this evidence, the Board highlighted that these sources were not "big box" retailers selling a wide variety of unrelated items, but rather specialty retailers focused specifically on packaging. The fact that these targeted sellers offered both the Applicant’s and the Registrant’s goods served as a strong indicator of relatedness. Furthermore, the evidence showed that the products were complementary, as they are often used together to pack and protect items for shipment. Consequently, the Board concluded that consumers would expect these goods to emanate from a common source, a finding that heavily supported a likelihood of confusion.

DuPont #3: Channels of Trade and Classes of Consumers

The Applicant maintained that the goods were marketed in distinct trade channels and directed toward different consumers. However, the Board found this argument unsupported by the record, observing that neither the Applicant’s nor the Registrant’s identification of goods contained any limitations regarding intended users or specific trade channels.

The Board reiterated that in the absence of restrictions in the identification of goods, it must presume the goods travel in all appropriate channels of trade to all normal classes of purchasers. Here, the record evidence from the specialty packaging retailers reinforced the presumption that the trade channels and consumer classes overlapped. Because the goods are sold through the same specialized entities to the same prospective customers, the Board found that this factor weighed in favor of a likelihood of confusion.

Board’s Decision

The Board affirmed the Section 2(d) refusal in its entirety. Ultimately, the Board concluded that the similarities between the marks, particularly the dominant "OX" element, outweighed the visual differences created by the Applicant's design. This similarity, coupled with the related and complementary nature of the packaging goods and the overlap in specialized trade channels, created a clear likelihood of confusion for prospective consumers. Furthermore, the Board specifically rejected the Applicant's contention that the marks were sufficiently distinct to avoid confusion, finding instead that the shared arbitrary term "OX" would naturally lead consumers to assume a connection between the parties.

A significant portion of the decision was dedicated to the Applicant’s failed attempt to amend its identification of goods during the appeal. The Applicant did not seek leave or request a remand but simply inserted a new, expanded identification in its brief and argued the appeal based on those new terms. The Examining Attorney objected, arguing the amendment was untimely and exceeded the scope of the original application.

The Board treated the embedded amendment as a request for remand and evaluated whether "good cause" had been shown. The Board referenced the Trademark Trial and Appeal Board Manual of Procedure (TBMP) Section 1205.01, noting that good cause is generally found when an amendment is an attempt to comply with a requirement or to obviate a refusal. However, the Board emphasized that the stage of the appeal and the reason for the delay are critical factors.

In this instance, the Applicant failed to show good cause. The Board noted that the Applicant did not even request permission to amend, but rather presumed it was entitled to do so. The Applicant offered no explanation for the delay. Furthermore, the Board concluded that even if the amendment had been accepted, it would not have obviated the Section 2(d) refusal, as the core relatedness of the primary goods remained. Consequently, the Board ruled that the original identification remained the operative one for the appeal.