Wednesday, November 29, 2006

Finding Fishing and Climbing Gear Related, TTAB Affirms 2(d) Refusal of "METOLIUS"

Applicant G. Loomis struggled mightily, but it just could not climb the mountain to reversal of the Board's 2(d) refusal to register the mark METOLIUS for fishing gear. The Board, not surprisingly, found the mark likely to cause confusion with the identical mark, registered as a "house mark for a full line of mountain climbing equipment." In re G. Loomis, Inc., Serial No. 78279545 (October 11, 2006) [not citable].

The Metolius River

Applicant argued that "Metolius" is the name of a river in Oregon, and "the irony is rich that a mountain climbing source would be named after a river." It claimed that METOLIUS has distinct and different connotations when used with mountain climbing gear as opposed to fishing gear. The Board did not take the bait: "the connotation and commercial impression would not vary significantly.... In either instance the natural beauty of the location and its general suitability for outdoor recreation would most likely dominate...." Moreover, purchasers unfamiliar with the river would likely perceive METOLIUS as an arbitrary designation without any particular meaning.

As to the goods, Loomis argued that they are "decidedly different," but the Board noted that this "misses the point." The question is not whether the goods may be confused, but whether the sources may be confused.

Applicant then contended that its goods and those of the Registrant are sold through different outlets in the Seattle area. The Board, of course, pointed out that evidence and argument focused on one particular geographic area are of "limited probative value." Moreover, the involved application and registration are not limited to particular channels of trade, and the PTO's evidence showed that both type of goods could be sold through the same trade channels.

As to purchaser sophistication, the Board noted that the involved goods "could vary in price from relatively inexpensive items to more expensive items." However, even assuming that the goods are relatively expensive and would be purchased with a significant degree of care, the Board could not assume that all purchasers are sophisticated. And in any case, "even sophisticated purchasers are not immune from trademark infringement."

Finally, Applicant argued that Registrant does not mark its products with the term METOLIUS, and that its own METOLIUS mark is a "third-tier" trademark, used along with Applicant's G. LOOMIS house mark, and the mark STREAMDANCE for its fishing line. The Board cast those arguments aside, again noting that the application and registration place no limitations on the use of the marks. It noted that such arguments might have value in a civil action but not in a TTAB proceeding.

In conclusion, the Board found confusion likely, and affirmed the refusal to register.

Text © John L. Welch 2006.


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