Sunday, November 14, 2004

Manny, Moe & Jack Cry "Fraud!" -- And the Board Agrees.

Growing up in Chicago, I never saw a "Pep Boys” store. Our automotive needs were served by the Western Auto on Halsted Street. I was, however, vaguely familiar with Manny, Moe & Jack from their anatomically incorrect caricatures that appeared on a matchbook someone showed me at school.

In the past two years, however, the TTAB has twice found that PEP BOYS is a famous mark for Section 2(d) purposes. But in each case the Section 2(d) claims were dismissed because the challenged mark and the PEP BOYS mark were too dissimilar.

The Boys provided a carload of evidence to show that PEP BOYS is a famous mark for retail stores services featuring automotive parts and accessories. The Board noted that the PEP BOYS mark has been in use for 80 years, that annual sales now approach $2 billion, and that PEP BOYS ranks as one of the top five automotive service providers in the country.

Nonetheless, in The Pep Boys Manny, Moe & Jack of California v. Cherng Lian Ent Co, Opposition No. 91108772 (April 16, 2003) [not citable], the Board found the PEP BOYS mark not confusingly similar to the mark ROADBOY & Design for automobile lights. And in The Pep Boys Manny, Moe & Jack of California v. Hanharutaivan, Opposition No. 91105133 (Sept. 29, 2004) [not citable], the Board dismissed a Section 2(d) claim directed at the mark CARRYBOY & Design for various truck accessories. (The Board also dismissed a dilution claim in the first case for the same reason – the marks were too dissimilar.)

However, in the Hanharutaivan case the PEP BOYS were victorious on two grounds. First, the opposed application was deemed void ab initio because Applicants failed to show any “technical trademark use” of the challenged mark in commerce as of the time they filed their use-based application. Although Applicants had made “internal” shipments of product from Thailand to the US and had displayed the product at a trade show prior to the filing date, the first sale of goods occurred more than six months after the filing date.

Second, the PEP BOYS prevailed on the ground of fraud. During prosecution, Applicant falsely declared to the PTO that “goods have been shipped in interstate commerce between Thailand and the U.S. beginning March 1994 by the distributor, Truck Style, Inc.” In fact, no one shipped goods beginning in March 1994 between Thailand and the U.S. Applicants tried to explain their misstatements on the basis of “language difficulties” and confusion as to the meaning of “use in commerce,” but the Board was not sympathetic:
“we agree with the Opposer that the statements made in the declaration were made knowingly. This Board will not tolerate a situation where applicants knowingly provide false, material information to counsel for preparation of a declaration so critical to the application process.”
Thus one is left to conclude that the PEP BOYS may be eighty years old, but they sure have some fight left in them.


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