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 v. Samsung Electronics Co., Ltd., Opposition No. 91222405 (November 9, 2021) [not precedential] (Opinion by Judge Karen Kuhlke)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 third-party mentions.
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."
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."
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.
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