Reversing Order of Words of a Mark and Consistent Use of a Mark

CAGE_PHConventus Orthopaedics applied to register two marks CAGE PH and PH CAGE for surgical implants. The Examining attorney refused registration on the basis that each mark was descriptive. The Examining attorney argued that PH was descriptive for proximal humerus (bone). The TTAB reversed finding that there was not enough evidence to show that PH was descriptive.

What’s interesting about this case is that the applicant applied to register CAGE PH (No. 86534128) and its reversed/transposed order PH CAGE (No. 86534174). This is unusual. Normally you want to use a mark consistently in order to properly build trademark rights. Inconsistent use of a mark can negatively impact your trademark rights.

Further, the TTAB has said that reversing or transposing the elements/words of a mark does not avoid a conflict when the overall commercial impression of the marks are not changed. For example see In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989) (THE WINE SOCIETY OF AMERICA and AMERICAN WINE SOCIETY); In re Nationwide Indus., Inc., 6 USPQ2d 1882 (TTAB 1988) (RUST BUSTER and BUST RUST); and In re Gen. Tire & Rubber Co., 213 USPQ 870 (TTAB 1982) (SPRINT STEEL RADIAL and RADIAL SPRINT).

Maybe Conventus was worried that its mark(s) were not that strong. But even if there might be some legal reason to use a mark and its transposed variation on the same goods, there may be marketing reasons not to.

On Conventus website the general product page lists CAGE PH but then when you click to drill down to the specific detail page for this product, that page lists the product as PH CAGE.

Would it be odd to encounter Coca-Cola sometimes and Cola-Coca others? Or would you order a Big Mac sometimes and order a Mac Big others for the same product?

Normally, you pick a strong trademark, register it, and allow trademark law to block similar marks used on similar goods/services, without having to use those variation of similar marks yourself on the same goods/services.

Citation: In re Conventus Orthopaedics, Inc., Nos. 86534128, 86534174 (TTAB 2017).

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