Introduction

On March 11, 2020, TTAB issued a decision in Shannon DeVivo v. Celeste Ortiz. Celeste Ortiz,  (“Applicant”) filed a trademark application on November 18, 2017 for the word mark ENGIRLNEER for the following: Cups, coffee cups, tea cups and mugs in Class 021, Lanyards for holding badges; Lanyards for holding keys in Class 22, and Hoodies; Shirts; Sweatshirts in Class 25. Shannon DeVivo (“Opposer”) opposed Applicant’s application, asserting use of the mark since at least October 23, 2017 for information services, a website featuring educational services, and online educational information, and, at least since November 11, 2017, books. Applicant denied the likelihood of confusion alleged by Opposer. The parties submitted a (Proposed) Agreement for Accelerated Case Resolution, which was approved on May 3, 2019, and the opposition was brought to the Trademark Trial and Appeal Board (TTAB).

Decision

While evidence was accepted, Applicant did not submit evidence but submitted a brief. Opposer submitted Internet evidence and proof of ownership of two trademark applications that were suspended due to Applicant’s application. It was determined that Opposer demonstrated a “real interest” in the proceeding, and thus, had good standing, as she had “a reasonable basis for her belief of damage from registration of Applicant’s mark…” (5).

TTAB also determined that Opposer established priority of use of the mark. Opposer states that she’d been using the mark since June 2017, through the registration of engirlneer.com, where she started publishing information in September 2017. She’d since published a book of fictional “engirlneer” characters and had been speaking at public events. TTAB found that Opposer’s maintenance of her webpage and book, along with its characters, associated her services with the ENGIRLNEER mark prior to Applicant’s filing date of November 18, 2017

The Dupont factors were considered in determining likelihood of confusion. The factors of similarity of the mark and similarity of goods/services were especially significant in this decision.

Opposer’s design mark is considered identical to Applicant’s standard character mark, since Applicant’s mark would not be limited to font style, size or color, and thus, could be assumed to be identical to Opposer’s mark. The other Dupont considerations resulted to be at least neutral.

Regarding the Dupont factor of similarity of goods/services, although both parties’ goods appear to be different, TTAB favored that their goods are commercially related, citing, “It is common knowledge that…the licensing of commercial trademarks on ‘collateral products’ has become a part of everyday life” (36).  

In light of the above, Application’s registration was refused.

Conclusion

Upon adopting a new mark, it is important to consider the existence of potentially conflicting marks. Moreover, as shown here, a difference in goods/services may not always be strong enough to ensure registration of two potentially conflicting marks. Prior research is beneficial when considering registration of a mark with the USPTO.

Full Shannon DeVivo v. Celeste Ortiz decision can be read here: https://efoia.uspto.gov/Foia/RetrievePdf?system=TTABIS&flNm=91242863-03-11-2020.

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