Tuesday, February 17, 2009

Long, Strange Trip Ends in Split TTAB 2(d) Decision for "ORIENT-EXPRESS" Applicant

Fifteen years after filing his application, Stuart S. Hoffman's attempt to register the mark ORIENT EXPRESS & Design (shown immediately below) for cigars and smoking tobacco was derailed by the TTAB when it sustained Section 2(d) oppositions brought by the French railway SNCF and by VSOE, the owner of the ORIENT-EXPRESS railway line. The Board, however, gave the green light to Hoffman's 1997 application to register the same mark for perfume and cologne. Unlike a trip on the Orient-Express, the Board's journey to that result was neither romantic nor exciting, but the TTABlog shall summarize it nonetheless. Societe Nationale des Chemins de Fer Francais and Venice Simplon-Orient Express, Inc. v. Stuart S. Hoffman, Oppositions Nos. 91095769, 91097079, 91109552, 91109821 (February 9, 2009) [not precedential].

SNCF owns several registered marks that consist of or contain the term ORIENT-EXPRESS:

  • VENICE SIMPLON-ORIENT-EXPRESS for railway passenger services.
  • COLLECTION VENICE SIMPLON-ORIENT-EXPRESS for goods in eleven classes, including ashtrays.
  • VENICE SIMPLON ORIENT-EXPRESS & Design for railway passenger services.
  • ORIENT EXPRESS HOTELS for hotel and restaurant services.
  • ORIENT-EXPRESS for trains and for transportation services.
  • ORIENT-EXPRESS for ship transportation services.

Opposer VSOE is licensed to provide goods and services under the marks.

Opposers claimed that the their marks are famous, but their proofs fell short. Although Opposers provided revenue figures, the numbers related to worldwide sales, not US revenues. This is particularly significant since Opposers' "primary activities are admittedly performed outside the United States." Moreover, Opposers did not provide a context for the revenue figures -- e.g., market share.

The Board found that the dominant portion of all the marks is the term ORIENT-EXPRESS. Opposers' testimony established that, despite the appearance of the term VENICE SIMPLON in several of the marks, the services are "frequently known and referred to as simply 'Orient-Express.'" The Board noted that this is "consistent with previous cases in which we have noted the propensity of consumers to shorten trademarks." [This testimony seems a bit self-serving, don't you think? Was there any corroborative documentation? - ed.] The Board concluded:

While we consider the marks in their entireties, and we have not ignored the design element included in applicant’s mark, the visual and aural similarities between applicant’s mark and opposers’ are undeniable. Both prominently feature the term “ORIENT-EXPRESS,” and thus look and sound substantially alike.

The Board also found that the marks have similar meanings: as to the services marks, the term "ORIENT-EXPRESS" means "rapid transportation to the 'orient,' i.e., the east." As to the other marks, the term is purely arbitrary.

In sum, the Board dubiously found that Applicant's mark is "substantially similar to Opposer's marks." [I agree, provided that you ignore the VENICE SIMPLON part - ed.]

click on image for larger picture

Turning to the goods and services, the Board found that Applicant's cigars and smoking tobacco are "clearly related" to the "ashtrays" of Opposers' registration [for COLLECTION VENICE SIMPLON-ORIENT EXPRESS]. "Ashtrays are related in purpose to cigars and smoking tobacco, and are intended to be used at the same time for complementary purposes." [ashtray:cigar as crusher:automobile. Therefore crushers and automobiles are related for Section 2(d) purposes? - ed.]

As to perfume and cologne, however, the Board was unable to find a "significant relationship" to any of the goods or services in Opposers' registrations. Opposers argued that the registrations of record cover a broad range of goods and services, and therefore that the public "is more likely to be confused by the use of the mark on different goods and services." The Board, however, noted that this may be true when a mark is shown to be in wide use, but here Opposers provided "little evidence of their current use of their marks in U.S. commerce."

Balancing all the du Pont factors, the Board sustained the opposition to the cigar/tobacco application, but dismissed the opposition to the perfume/cologne application.

TTABlog comment: Is there any doubt as to why Hoffman chose the ORIENT-EXPRESS mark, with the French design appended? Opposers argued that Hoffman "intentionally sought to trade on the goodwill or reputation associated with [o]pposer's marks, violating Section 1052(a)." Unfortunately for Opposers, however, they failed to plead Section 2(a) in their notices of opposition, and so the Board refused to consider the issue.

Suppose the Opposers sought review by way of civil action under 15 U.S.C. Section 1071(b). Would they be able to introduce the Section 2(a) issue? Consider the TTABlog posting (here).

Note that Opposer VSOE included a claim for dilution in its oppositions. The Board tossed that overboard, observing that since VSOE failed to prove fame for its 2(d) claim, it could not possibly meet the higher standard for fame applicable to a dilution claim.

Text Copyright John L. Welch 2009.


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