Friday, April 20, 2007

TTAB Sustains 2(d) Opposition, Deems "VOLKSWAGEN" and "Volks-bagen" for Luggage Confusingly Similar

Finding that all of the pertinent du Pont factors either favored Opposer or were neutral, the Board sustained an opposition to registration of the mark "Volks-bagen" for "backpacks, tote bags, and luggage," finding it likely to cause confusion with the mark VOLKSWAGEN registered for a wide variety of goods and services, including suitcases, luggage, book bags, and carry-on bags. Volkswagen AG v. Mentken, Opposition No. 91165323 (April 9, 2007) [not precedential].

Because the goods of the parties were identical or closely related, the key issue was the similarity of the marks. Applicant Robert Mentken argued that "volks" is a commonly-used and suggestive term that is a weak formative, and that the marks as a whole differ in sound, appearance, and connotation. The Board disagreed.

First, it found the marks to be similar in sound and appearance, since the marks differ only in one letter. As to connotation, Applicant argued that consumers would translate the mark VOLKSWAGEN into its literal counterparts, "people" and "car," and would be perceive Applicant's mark as "people's bagen," or, since "bagen" has no meaning in German, as "people's bag." The Board, however, found no evidence to indicate that consumers, even if they had a basic familiarity with or common understanding of German, would so translate the marks.

Instead, purchasers are likely to regard the marks as two foreign terms "which appear to be quite similar in meaning." To the extent that an American consumer would ascribe meaning to the marks, he or she would probably treat "volks" as meaning "folks," and "wagen" as meaning "wagon." The term "bagen" would "be regarded as something like 'bag.'" And, according to the Board,

"[i]nasmuch as a wagon and a bag plainly are both items used by persons or folks for carrying or toting items, the marks 'VOLKSWAGEN' and 'Volks-bagen' could reasonably be surmised as being substantially similar in connotation." [TTABlog comment: now that's a stretch!]

As to Applicant's argument regarding the weakness of the "volks" formative, he failed to show the significance of that term (meaning "products for everyone") in connection with luggage and bags. In any case, even if Opposer's mark were weak, weak marks are entitled to protection against registration of a substantially similar mark for identical or related goods.

Finally, because of the substantial similarities in sound, appearance, and connotation, the two marks are substantially similar in overall commercial impression.

Opposer Volkswagen argued that its mark is famous, but the Board agreed with Applicant on this one: there was no proper evidence in the record to establish that VOLKSWAGEN is a famous mark. Opposer's relied on two prior decisions (one by the Fourth Circuit and one by the National Arbitration Forum) holding VOLKSWAGEN to be a famous mark, but the factual findings in those cases are not evidence in this case, and in any event the rulings were made more than five years prior to the closing date of Opposer's testimony period.

As to the asserted lack of actual confusion, that was not meaningful here because there was no evidence of an an opportunity for confusion to occur.

Weighing all the pertinent du Pont factors, the Board found confusion likely, and it sustained the opposition.

Text Copyright John L. Welch 2007.


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