Wednesday, November 19, 2008

Fame of "KOHLER" Mark for Faucets Keys TTAB 2(d) Victory over "KOHLER HOMES"

Fame was the name of the game in Kohler Co.'s Section 2(d) opposition to the marks KOHLER HOMES for "custom construction of homes" [HOMES disclaimed] and KOHLER ASSOCIATES ARCHITECTS for "architectural design" [ASSOCIATES ARCHITECTS disclaimed]. The Board found those marks likely to cause confusion with the registered marks KOHLER and THE BOLD LOOK OF KOHLER for plumbing fixtures and fittings, bath tubs, sinks, and the like. Kohler Co. v. Kohler Homes, Opposition No. 91152287 (November 4, 2008) [not precedential].

Opposer Kohler proved sales of more than $18 billion and advertising expenditures of more than $150 million. Its affiliates operate some 600 showrooms across the country. It has sold some of its products for 70 years, and sinks and bathtubs for more than 100 years.

The Board therefore concluded that the mark KOHLER "is famous in connection with bathroom fixtures and within the home construction industry generally for purposes of our likelihood of confusion analysis, and is entitled to broad protection." Fame "plays a dominant role" in the likelihood of confusion analysis, and this factor "weighs heavily" in Opposer's favor.

As to the marks, the Board not surprisingly found that the dominant portion of Applicant's marks is the word KOHLER. As to THE BOLD LOOK OF KOHLER, the word KOHLER "figures prominently in creating the commercial impression of this mark as it identifies what has the 'bold look.'"

In short, the Board found that Applicant's marks are similar to Opposer's, and this factor favors Opposer.

As to the goods and services involved, the Board found that the classes of customers overlap:

"[T]he relevant public for opposer's goods and applicant's architectural design services are homeowners, commercial building owners, contractors and builders, and the relevant public for opposer's goods and applicant's custom construction of homes services are current or future homeowners."

The parties promote their respective goods and services in home design magazines and journals, and in newspapers. Opposer provides support, educational programs, and design tools to builders, architects, designers, and homeowners. Thus Opposer has established itself as more that just a seller of fixtures: it is closely associated with the home construction, renovation, and remodeling industries. Applicant provides design services as part of its architectural services, and assists customers in choosing bathroom fixtures. In fact, it has installed Opposer's fixtures for its customers.

The Board noted that when a famous mark is involved, "special care is necessary to appreciate that products [and services] not closely related may nonetheless be confused as to source by the consumer because of the fame of the mark."

The Board therefore found that, under these circumstances, the similarity of the goods and services favors a finding of likely confusion as to both of Applicant's marks.

Opposer offered a mall intercept survey purporting to show confusion at a level greater than 30%. However, the Board gave the limited weight to these results, since mall intercept surveys are not based on a random sample. Moreover, the number of participants in this survey was small.

Applicant argued that confusion is unlikely because its customers are discriminating. The Board found, however, that even if that were true, "the similarity of the marks and the goods and services outweigh any purchaser sophistication." Moreover, even sophisticated purchasers are not immune to source confusion.

Finally, Applicant contended that there are numerous uses of KOHLER by third parties, and so Opposer's mark cannot be considered particularly strong. However, many of the uses proffered by Applicant were for goods or services not similar to Opposer's goods. Moreover, Applicant provided no information as to the "extent to which purchasers and prospective purchasers are exposed to [those marks] or their familiarity with them."

Weighing the relevant du Pont factors, the Board found confusion likely and sustained the opposition.

TTABlog note: Applicant seemed to avoid making the common but useless argument that, because its principal is named Mark Kohler, it has the right to use the name Kohler.

Opposer tried to make some actual confusion hay out of Mr. Kohler's testimony that customers sometimes ask if he is connected with Opposer. Also Mr. Kohler stated that when he meets a prospective customer, he tries "to make it clear that we're not associated with [opposer] so we don't have that confusion in the very beginning of sales." The Board discounted the significance of these encounters because "Mr. Kohler's last name is the same as opposer's mark" and therefore the testimony is not conclusive as to whether anyone was actually confused. Query: does the Board's explanation make sense?

Text Copyright John L. Welch 2008.


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