INVISALIGN mark possesses both inherent and acquired distinctiveness from new MAGICALIGN mark
The Federal Court has dismissed dental product and service provider Align’s opposition to the trademark application of Osstemimplant for its MAGICALIGN mark for orthodontic products.
In Align Technology, Inc. v. Osstemimplant Co., Ltd, 2022 FC 720, Osstemimplant filed a trademark application for MAGICALIGN, which was to be used in association with custom orthodontic products. Align opposed the registration, asserting that it was confusingly similar to Align’s family of trademarks, including INVISALIGN and ALIGN, which had been extensively used in Canada in association with orthodontic and dental products and services.
The Trademarks Opposition Board (TMOB) dismissed Align’s opposition, finding that there was no reasonable likelihood of confusion between the parties’ trademarks. The board considered the length of time that Align’s trademarks have been extensively in use, the identical nature of the goods and trade, and the fact that Align has a small family of trademarks. The board concluded that an ordinary consumer would not be likely to think that the goods associated with MAGICALIGN would emanate from the same source as those associated with the INVISALIGN or ALIGN trademark or vice versa.
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According to case law, the legal test for assessing the likelihood of confusion is “as a matter of first impression in the mind of a casual consumer, somewhat in a hurry, with an imperfect recollection of the trademark, who does not pause to give the allegedly confusing mark in front of them any detailed consideration or scrutiny or to examine closely the similarities and differences between the marks.”
Applying the legal test, the court agreed with the board’s finding that given the overall differences in the appearance, sound, and idea of the marks, there would be no likelihood of confusion in the marketplace. The court found that the ALIGN trademarks had been extensively used over an extended period time, compared with proposed use by Osstemimplant, who is a new entrant into the market. The court further found that the strength of the INVISALIGN mark, which possesses both inherent and acquired distinctiveness, would exceed that of MAGICALIGN, which although inherently distinctive, had no marketplace use.
The court said that an ordinary consumer would not, as a matter of first impression, be likely to think that the goods associated with MAGICALIGN would emanate from the same source as those associated with INVISALIGN and ALIGN marks because the appearance, sound, and idea conveyed by the marks were too dissimilar. The court dismissed Align’s opposition.
