Wednesday, May 23, 2007

Precedential No. 35: GULP! 7-11 Loses 2(d)/Dilution Opposition to "GULPY" for Animal Water Dishes

In its first significant precedential dilution ruling in four years, the Board dismissed an opposition to registration of the mark GULPY for "portable animal water dishes and animal water containers sold empty," finding it not likely to cause confusion with 7-11's GULP marks, and not likely to dilute 7-11's famous mark BIG GULP, for fountain drinks. A crucial factor in both rulings was the Board's finding that the mark GULPY and GULP create different commercial impressions. 7-Eleven, Inc. v. Wechsler, Opposition No. 91117739 (May 15, 2007) [precedential].

Likelihood of Confusion: The Board first found that 7-11 owns a family of GULP marks (including BIG GULP, SUPER BIG GULP, X-TREME GULP, and OBSCENELY HUMONGOUS GULP [I made up the last one - ed.]) for fountain drinks. However, the Board concluded that the GULPY mark is sufficiently different from 7-11's GULP family surname that "consumers are not likely to perceive GULPY as a member of opposer's 'Gulp' family of marks." [Gulpy Gulp? - ed.]

"Opposer's family surname, the word 'Gulp,' is a common word meaning 'to swallow hastily, greedily, or in large amounts' or 'the amount swallowed at one time.'" *** The word 'Gulpy' is not constructed in the same manner as opposer's 'Gulp' marks, and when applied to a portable animal water dish, it engenders a different commercial impression (e.g., a puppy drinking water from a bowl or a pet's name)."

Noting that 7-11 has never sold pet food or pet accessories under any of the GULP trademarks, the Board opined, "it cannot be said that recognition of the 'Gulp' surname carries over to portable pet water dishes."

Turning next to 7-11's individual marks, the evidence established that the mark BIG GULP has a "very high degree of public recognition," but not so as to the other GULP marks. But the dissimilarity of the marks and the goods were factors that favored Applicant, and they overcame the Section 2(d) fame of the BIG GULP mark, leading the Board to conclude that confusion is not likely.

Dilution: Turning to Section 43(c) as amended on October 6, 2006 by the Trademark Dilution Revision Act, the Board first noted that the requirements for proving fame for dilution are more stringent than the requirements for proving "fame" under Section 2(d). Nonetheless, it found that BIG GULP is a famous mark for dilution purposes. 7-11 established that the BIG GULP mark received extensive media attention and enjoyed a 73% unaided awareness among all consumers. This evidence was "similar to the quantum and quality of evidence introduced in Nasdaq Stock Market Inc. v. Antartica S.r.l.., 69 USPQ2d 1718 (TTAB 2003)." Moreover, the evidence establishing fame pre-dated the filing date of Applicant's I-T-U application, as required by Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001).

Focusing on the issue of blurring, the Board noted that it may consider all relevant facts, with the Lanham Act providing guidance as to certain factors that may be considered: including (i) the similarity of the marks; (ii) the degree of inherent distinctiveness of the famous mark; (iii) the extent of exclusive use of the famous mark; (iv) the degree of recognition; (v) the intent of the alleged diluter; and (vi) any actual association between the marks.

For purpose of dilution, the marks at issue must be not just confusingly similar, but "identical or very substantially similar." Here, as noted, the marks GULPY and BIG GULPY engender different commercial impressions, and thus the Board did not "see the marks as being essentially the same." This factor "heavily favors applicant."

Moreover, because BIG GULP is suggestive for fountain soft drinks, the second dilution factor favored applicant. 7-11 has made substantially exclusive use of the BIG GULP mark, and so the third factor favored Opposer.

As to the fourth factor, although BIG GULP is famous, "there is insufficient evidence to demonstrate that BIG GULP has acquired an extraordinary degree of recognition relative to other famous marks." The Board considered that factor to be neutral.

There was no evidence that Applicant intended to create an association with the BIG GULP trademark, and so the fifth factor favored Applicant.

And finally, there was no proof of any actual association between the GULPY mark and the BIG GULP mark, and so the sixth factor favored Applicant.

Balancing all the factors, the Board found that those favoring Applicant "far outweigh" those favoring Opposer 7-11, and therefore it concluded that 7-11 had failed to prove its dilution claim.

TTABlog note: The Toro and NASDAQ decisions are discussed in some detail in my 2004 article entitled "Dilution at the TTAB: What to Prove and How to Prove It." Much of that article remains relevant, despite passage of the TDRA in 2006.

Text Copyright John L. Welch 2007.


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