No exclusive right to use the gear device

In Rotary International v. Pegroup, Inc., IPC No. 14-2013-00177 (January 04, 2017), Opposer Rotary International (“Opposer”) filed an opposition to the registration of Pegroup, Inc.’s (“Respondent-Applicant”) FOODMACH mark. The Adjudication Officer ruled that the competing marks provided below are not confusingly similar.

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Trademarks are confusingly similar if the overall presentation of both marks would lead the public to believe that the goods to which the marks are affixed emanate from the same source, or are connected or associated with each other.

In this case, the competing marks are distinct in sound, appearance, and connotation. The Adjudication Officer ruled that what is impressed on the mind of a consumer who encounters the competing marks are the words FOODMACH and ROTARY. The only similarity between the two marks is the use of a gear device. However, such similarity is not sufficient as consumers can easily distinguish between the two marks.

Moreover, Respondent-Applicant’s mark is endowed with other distinguishing features. Therefore, the competing marks are distinct in sound, appearance, and connotation. In addition, the BLA cited four trademarks belonging to different proprietors that use a gear device in Class 35. Thus, Opposer does not have the exclusive right to use the gear device in Class 35.

Questions:

Why did the Opposer oppose the subject mark?

Do the Opposer and Respondent-Applicant offer the same service?