A trademark registration for the mark PROHEAR for audio headphones and related goods has been cancelled based on a likelihood of confusion with the mark PROTEAR for similar goods. The trademark cancellation proceeding was filed and decided before the U.S. Trademark Trial and Appeal Board.
The case, Hangzhou Zhaohu Technology Co., Ltd. v. Hangzhou Johnson Tech Co., Ltd,, presented facts that are commonly found in cancellation proceedings based on a likelihood of confusion. In such cases, the Petitioner bears the burden of proving a likelihood of confusion based on a preponderance of the evidence.
A summary of the TTAB’s decision is outlined below:
Priority. In any trademark cancellation proceeding based on likelihood of confusion, the Petitioner has to establish its prior trademark rights in the form of a trademark registration or common law use that predates the Respondent’s first use. Here, the Petitioner’s application for its PROTEAR Mark was December 9, 2016. Respondent’s application for its PROHEAR Mark was filed on August 30, 2018. Respondent had offered no evidence of prior common law use. This factor was resolved in Petitioner’s favor.
Statutory right to bring a cause of action. To maintain its case, a Petitioner has to show that it has a legitimate interest in the outcome of the proceeding and is not a mere intermeddler. Here, Petitioner was able to do so by the introduction into evidence of its prior registration of the PROTEAR Mark for similar goods.
The likelihood of confusion analysis includes the following factors:
Similarity of the Marks. The first step in a likelihood of confusion analysis is whether the parties’ respective marks are similar in sight, sound, meaning, and commercial impression. The petitioner’s Mark is PROTEAR; the Respondent’s Mark is PROHEAR. Since the marks are identical with the exception of one letter, this factor weighed in Petitioner’s favor.
Relatedness of the Goods. While both parties’ trademark registrations contained many goods listed in their respective registrations, certain of the goods were either legally identical or highly related, such as Petitioner’s headphones and Respondent’s audio headphones. When two registrations share one or more goods that are in part identical, then the likelihood of confusion analysis for this factor will favor the Petitioner.
Relatedness of trade channels. Here, the goods are in part identical and the registrations unrestricted with regard to trade channels. Accordingly, it is presumed as a matter of law that the goods of the respective parties travel in the same trade channels and are marketed to the same potential consumers. This factor weighed in Petitioner’s favor.
Actual confusion. Evidence of actual confusion is probative of likelihood of confusion. While the Petitioner submitted evidence of alleged actual confusion, the Board did not find it conclusive. Therefore, this factor was neutral.
The Board’s decision. The petitioner successfully established its statutory right to bring a cause of action and priority. These two elements of its case were necessary to proceed with the likelihood of confusion analysis. With regard to the likelihood of confusion analysis, since the goods were identical in part, the similarity of the marks necessary to support a likelihood of confusion need not be as great. Regardless, the Board found here that the PROTEAR and PROHEAR Marks were similar in sight, sound, appearance, connotation, and commercial impression. Accordingly, judgment entered in favor of Petitioner, and the Respondent’s registration was cancelled.
Editor’s Note: a summary of the likelihood of confusion factors, which is applicable to both trademark cancellation and trademark opposition proceedings, may be found in our post here.