The USPTO refused to register the mark MOXIE SCRUBS, in the the logo form shown below, for "Footwear; Headwear; Pants; Shirts; Shorts; Socks; Uniforms; Jackets; Scrub tops and pants not for surgical purposes" ("SCRUBS" disclaimed), finding confusion likely with the registered mark MOXIE for "T-shirts; shirts; poloshirts; sweatshirts; athletic shirts; athletic jackets." Applicant argued that, based on eight third-party registrations and 14 third-party uses of MOXIE and MOXIE-formative marks in the clothing industry, MOXIE is a weak formative, and so the marks are distinguishable by consumers. How do you think this came out? In re Moxie Inc., Serial No. 90100833 (September 28, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

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The Board began with an analysis of the strength of the cited mark. Applicant pointed to eight third-party registrations for MOXIE- (or MOXY-) formative marks for clothing and footwear, including MOXIE JANE, MOXY & ZEN, and MOXXY SPORT. Applicant also provided specimens showing use of these marks in the marketplace, though such evidence does not show the extent of use of the marks or their impact on consumers. The Board found that these registrations demonstrate the conceptual weakness of the cited mark.

Applicant also submitted evidence of fourteen third-party uses of MOXIE-formative marks, including Moxie & Co., Moxie Made, Moxie Skates, and Moxie Cloth. The Board found this evidence "highly probative to demonstrate commercial weakness" of the cited marks in the relevant field.

In sum, the term MOXIE is conceptually and commercially weak in connection with clothing, resulting in consumers being educated to look for minute distinctions in MOXIE (or phonetic equivalent) marks in the marketplace.

As to the marks, the Board found that the addition of the word SCRUBS and the nurse's hat design, coupled with the weakness of MOXIE, sufficed to distinguish applicant's mark from the cited mark, despite the identical nature of the involved goods and the overlap in trade channels and consumers.

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