Thursday, April 10, 2008

Precedential No. 18: TTAB Dismisses "SPORTSMAN'S WAREHOUSE" Cancellation Petition, Finding No Likelihood of Confusion and No Fraud

In an enervating 49-page decision, the Board tossed overboard a petition for cancellation of a registration for the SPORTSMAN'S WAREHOUSE logo mark [all wording disclaimed] shown immediately below, for retail and wholesale sporting goods store services, finding the mark not likely to cause confusion with Petitioner Bass Pro's registered logo mark BASS PRO SHOPS SPORTSMAN'S WAREHOUSE (shown way below) [SPORTSMAN'S WAREHOUSE disclaimed] for essentially the same retail store services. The Board also threw back into the water Petitioner's claim to common law rights in the word mark SPORTSMAN'S WAREHOUSE, and its claim that Respondent had committed fraud on the PTO. Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844 (TTAB 2008) [precedential].

No Fraud: Taking the last issue first, Bass Pro alleged that Respondent had never used its mark in connection with wholesale stores and therefore committed fraud when it filed its use-based application. However, although it appears that Respondent phased out wholesale services after the registration issued, several of its witnesses testified that Respondent rendered wholesale services prior to the filing of the application and issuance of the registration. That testimony, "while self-serving ... is credible."

The Board noted that Respondent was not obliged to amend its registration at the time it stopped using the mark for wholesale services:

"Further, while respondent could have filed an amendment to its description of services to delete 'wholesale services' under Section 7 of the Trademark Act as soon as it stopped using its mark in connection with such services, it was also reasonable for respondent to do so when it filed its declaration of use under Section 8 ...."

No Likelihood of Confusion: The Board first considered Petitioner's common law rights in the word mark SPORTS WAREHOUSE. The Board agreed with Respondent that SPORTS WAREHOUSE is descriptive for each party's respective services. It further found that the phrase, which Petitioner did not use apart from its logo, had not acquired distinctiveness.

Petitioner claimed that incidents of actual confusion demonstrated the acquired distinctiveness of the term, but the Board found that evidence "inconclusive." Petitioner also pointed to its likelihood of confusion survey results as being probative of acquired distinctiveness, but the Board also found this proof unpersuasive. At the time of the incidents and of the survey, Petitioner's use of the phrase was not exclusive, and so that undercut Bass Pro's argument that the phrase pointed to a single source.

Particularly in view of the lack of evidence that Bass Pro advertised or used the term SPORTSMAN'S WAREHOUSE separate from the term BASS PRO SHOPS or the logo, and the lack of proof showing shows that consumers perceive the phrase as a trademark, the Board concluded that Bass Pro had failed to demonstrate acquired distinctiveness for SPORTSMAN'S WAREHOUSE.

Next the Board considered the mark of Petitioner's pleaded registration. In a cancellation proceeding, petitioner does not necessarily have priority simply because it owns a registration. However, here Respondent's testimony of first use was unconvincing and the Board found that Bass Pro had prior use of its mark.

As to the du Pont analysis, the parties' services are identical and unrestricted as to channels of trade or classes of customers. The Board, however, found the marks dissimilar in connotation and overall commercial impression. Any similarity resulting from the descriptive term SPORTSMAN'S WAREHOUSE was outweighed by the other logo elements in each mark.

Bass Pro's evidence of actual confusion was of little probative value, since it was based on the term SPORTSMAN'S WAREHOUSE and not on the registered marks at issue:

"The fact that there may be evidence of confusion due to the concurrent use of a descriptive term is insufficient to warrant a finding that there is a legally recognizable likelihood of confusion where the marks as a whole are visually and aurally distinguishable."

Petitioner's survey evidence, which was based on the registered marks, was also of little value: the only similarity between the seven marks included in the survey was the term SPORTSMAN'S WAREHOUSE, which "would suggest to some survey respondents that they should find an affiliation between these two marks."

Balancing all the relevant factors, the Board found that Respondent's registered mark is not likely to cause confusion vis-a-vis the registered mark of Petitioner.

Text Copyright John L. Welch 2008.


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