Thursday, July 05, 2007

Precedential No. 45: TTAB Finds "DR. AIR" Confusingly Similar to "DR. SCHOLL'S" and "AIR-PILLO" in Combination

The TTAB sustained a Section 2(d) opposition to registration of the mark DR. AIR for footwear and insoles, finding the mark likely to cause confusion with the previously used and registered marks DR. SCHOLL'S and AIR-PILLO, considered together, for footwear and various related products. The Board ruled that, in view of the "widespread conjoint use" of Opposer's two marks, the number of units sold, extensive advertising, and the resultant fame of the DR. SCHOLL'S mark and the renown of the AIR-PILLO mark, the purchasing public associates the two marks together and "might well believe that applicant's insole is but another type of insole of opposer." [TTABlog comment: I doubt it.] Schering-Plough Healthcare Prods., Inc. v. Huang, 84 USPQ2d 1323 (TTAB 2007) [precedential].

Because the involved goods are identical, the Board presumed that they are marketed in all normal channels of trade to the usual classes of purchasers. Those purchasers would include ordinary consumers who would exercise ordinary care in their purchasing decisions.

As to the marks, the Board noted that when the goods at issue are identical, a lesser degree of similarity is required between the marks to support a finding of likely confusion.

It first reviewed Opposer's evidence of fame, noting that fame plays a "dominant role" in the likelihood of confusion analysis. Applicant did not deny that the DR. SCHOLL'S mark is famous: sales have totaled more than a billion dollars, and Opposer spent hundreds of millions advertising the brand, yielding a "high degree of brand awareness."

Sales of products displaying both marks exceeded ten million units, "constituting a significant portion of opposer's sales." Although the evidence fell short of establishing fame of the AIR-PILLO mark, it did show that the mark "has achieved some renown."

Turning to a comparison of the marks, the Board observed that this case "involves a twist" on the usual Section 2(d) analysis because it "presents the question of whether applicant's mark is confusingly similar to two of opposer's marks when the two marks are considered together."

To permit consideration of two marks together, two elements must be satisfied: the marks must have been used together, and the public must associate the marks together as source indicators for the product involved. Opposer passed the test. The DR. SCHOLL'S and AIR-PILLO marks are used together in close proximity (see illustration above) and, "given the widespread conjoint use over many years, the quantity of units sold, and the extensive advertising," it is reasonable to conclude that the marks are associated together in the minds of the purchasing public.

The Board then found that the similarities between Applicant's mark and the conjointly-used marks of Opposer outweigh the differences, and that consumers "might well believe that applicant's insole is but another type of insole of opposer."

Applicant Ing-Jing Huang feebly asserted that there are "other marks" that combine use of the terms "DR." and "AIR," but he failed to provide any evidence of same. He pointed to the lack of survey evidence supporting Opposer's claim, but the Board noted that survey evidence is not required ; moreover, in light of the high cost of surveys and the limited jurisdictional nature of TTAB proceedings, the Board will not draw a negative inference from a party's failure to provide survey evidence. Finally, Huang's reference to the lack of actual confusion evidence was completely lame, since his application is based on intent-to-use and thus there has been no opportunity for confusion.

The Board therefore found confusion likely and sustained the opposition.

Text Copyright John L. Welch 2007.


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