Trademark Trial and Appeal Board Shows Who’s BOSS in Granting Motion for Judgment on the Pleadings.

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Question: When can you decide a trademark case based on a single factor? Answer: when the two marks share not a single common term.

Applicant, PAC Trading Group sought to register the mark PAC BOOSTER THE PERFECT SOUND for audio equipment. The mark was opposed by Ava Enterprises, Inc. on the grounds that it believed the mark to be confusingly similar to its registered trademark, BOSS AUDIOSYSTEMS. Applicant moved for judgment on the pleadings on the ground that Opposer could not even claim a “threshold of similarity” between its mark and Applicant’s mark. Opposer responded that the term BOSS and BOOSTER are “nearly identical because they both start with the letters “BO” and contains an “S;” and moreover, the goods are identical. Acknowledging the similarity between the goods, the Board nevertheless granted the motion.

The Board wasn’t buying the notion that BOSS and BOOSTER are nearly identical, pointing out the obvious: they don’t look alike or mean the same thing. The Board concluded that “notwithstanding the overlap of the respective goods, a likelihood of confusion cannot exist as a matter of law and that this case should be decided on the first du Pont factor as being dispositive.”

Practice Note: OK, I give up. Why exactly did Opposer file this action? As a threshold matter, a potential opposer should find at least one similar word (or similar sounding or meaning word) before bringing an opposition on the grounds of likelihood of confusion. That two parties sell the same goods is insufficient.

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