It Appears Weak Marks are Less Likely to be Afforded Protection, Even when Some Similarity

The TTAB has found that JELLY CLIMAX MAXIMIZER and CLIMAX are not confusingly similar, despite the fact that they are used for similar goods, namely, vibrators.  Applicant Topoco Sales was initially rejected registration by the examining attorney because he found that the dominant portion of registrant’s JELLY CLIMAX MAXIMIZER mark was the term “climax” and, therefore, the two marks were confusingly similar.  The fact that the terms “jelly” and “maximizer” were also in the mark was not enough distinguish the two because jelly is properly disclaimed as descriptive and maximizer serves as a modifier that enhances “climax.” 

In reversing the examining attorney’s decision, the TTAB said that though both JELLY CLIMAX MAXIMIZER and CLIMAX will be used with similar goods and in the same channels of trade, the applicant’s argument, that it had properly disclaimed both “jelly” and “climax” because “maximizer” is the dominant portion of the mark, was correct:

When used alone by applicant in the context of adult sex toys, the word CLIMAX appears suggestive of the ultimate, intended effect of the goods. However, within the three-word phrase, “Jelly Climax Maximizer,” the word “Climax” is merely descriptive inasmuch as it modifies the word “Maximizer,” and tells the prospective purchaser precisely what the product does.

Since CLIMAX was found to be a weak mark, it wasn’t afforded the extent of protection that most arbitrary or fancifal marks are given and, therefore, JELLY CLIMAX MAXIMIZER was found to be registerable because CLIMAX was not the dominant portion of the mark.  This case illustrates the importance of registering trademarks that are very distinctive sources of brand identification because they will be afforded more protection by the Trademark Trial and Appeal Board.