TTABlog Test: Is “SAMSUNG WIZ” For Smartphones Confusable With “THE WIZ” For Consumer Electronics Retail Services?
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P.C. Richard & Son opposed an application to register
SAMSUNG WIZ for “smartphones; tablet
computer[s],” alleging a likelihood of confusion with its
registered marks THE WIZ and NOBODY
BEATS THE WIZ for retail store services featuring consumer
electronics. The Board wasted little time in finding the goods and
services to be related, but what about the marks? Are they close
enough? And how strong is THE WIZ anyway? How do you think this
came out? P.C. Richard & Son Long Island Corp. v. Samsung
Electronics Co., Ltd., Opposition No. 91222405 (November
9, 2021) [not precedential] (Opinion by Judge Karen Kuhlke)
Goods/Services: The Board has often recognized
that confusion is likely from the use of the same or similar marks
for goods and for services involving those goods. See,
e.g., In re Detroit Athletic Co., 903 F.3d 1297,
1307 128 USPQ2d 1047, 1052 (Fed. Cir. 2018). Opposer sells both
smartphone accessories and tablet computers in its stores. Thus,
the channels of trade and classes of consumers overlap.
Since the goods and services in the application and pleaded
registration are unrestricted, the Board must assume that the goods
and services are offered to ordinary purchasers who exercise no
more than ordinary care in their purchasing decisions.
Strength of Opposer’s Mark: Opposer claimed
that its marks are famous, but its evidence fell short. It did not
provide sales figures under each mark, and there was no evidence
regarding commercial impressions, social media following, or
Applicant Samsung argued that the term WIZ is conceptually weak,
pointing to a dictionary definition (a wizard or a skilled person)
and to third-party registrations and uses for marks that
incorporate the word WIZ, for a variety of electronics goods and
services. The Board found that the third-party registrations,
although not diminishing the commercial strength of Opposer’s
THE WIZ mark, “do underscore the somewhat suggestive and
laudatory nature of the word WIZ in connection with electronic
goods as something that is very good, something possessing
skill.” The Board concluded that WIZ is “somewhat
suggestive” for a variety of electronic goods.
Seventeen examples of third-party use of “WIZ” in
connection with electronic goods and services tended to show the
commercial weakness of “WIZ.”
Overall, we find both some conceptual and commercial weakness
for the word WIZ in the mark(s) THE WIZ (and NOBODY BEATS THE WIZ)
in connection with retail store services in the field of consumer
electronics and accessories. We accord the word WIZ in
Opposer’s THE WIZ mark a somewhat restricted scope of
The Marks: The Board found that SAMSUNG is
clearly the dominant portion of applicant’s mark, in view of
its position at the beginning of the mark and the great commercial
strength of the SAMSUNG mark, as revealed by the record evidence.
Furthermore, WIZ is somewhat suggestive and weak in connection with
the involved goods and services.
The Board concluded that applicant’s mark engenders a
different overall commercial impression than opposer’s mark,
sufficient to avoid likely confusion. “In connection with
Applicant’s goods, WIZ is modified by SAMSUNG, it is an
electronic SAMSUNG product that is a wiz, by comparison, THE WIZ
for retail stores featuring electronic products connotes a person
or store that is a wiz.”
We are cognizant of Opposer’s argument that if Opposer were
to sell the Samsung tablet computer on Opposer’s own retail
website using its SAMSUNG WIZ trademark, Opposer’s customers
would be confused. Considering the amount of WIZ marks used and
registered in connection with electronic goods and services, we
find that tends towards a mere theoretical possibility, given the
dominant element in Applicant’s mark.
Conclusion: Balancing the relevant
DuPont factors,the Board found “the differences
between the marks sufficient to avoid likely confusion despite the
relatedness of the goods and services, and trade channels, in
particular given the differences in overall commercial
impression.” And so, it dismissed the opposition.
TTABlogger comment: Well, somebody beat the
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