Thursday, March 19, 2009

Giving Naked Consents Some Weight, TTAB Reverses 2(d) Refusal of "BUHLER & Design"

Can you name two places where naked consents are consequential? Nudist colonies and the TTAB. Applicant Buhler Technologies GmbH trumped a PTO Section 2(d) refusal by submitting naked consents from the owners of the two registrations cited by the Examining Attorney. Although Applicant conceded that the involved marks are essentially identical, the Board bought Applicant's argument that the goods of the parties are not related, and it gave "some weight" to the letters of consent in dubiously finding no likelihood of confusion. In re Buhler Technologies GmbH, Serial No. 79034792 (February 12, 2009) [not precedential].

Applicant sought to register the mark first shown above (upper left) for various industrial goods and services in classes 7, 11, and 35. The PTO refused registration in light of four existing registrations owned by two companies, two of the registrations being for the word BUHLER in standard character form, and two for the word-and design marks show above right and bottom, all for various industrial goods and services. [The listings of the goods and services occupy about seven pages of the 21-page decision].

The two owners of the registrations provided letters of consent stating little more than that they "hereby consent to the registration and use of the trademark 'Buhler'" Applicant argued that these naked consents were entitled to "some weight" and, when coupled with the differences in goods and services, compelled a finding of no likelihood of confusion.

The Board noted that the consent letters lacked information regarding the "underlying facts which led the parties to conclude that confusion is not likely," and contained no restrictions on use of the marks in order to avoid confusion. Moreover, the subject application is based "solely on treaty rights and not on use in commerce," and so "there is neither evidence of use nor any real basis for the affected parties to determine that, based upon prior experience, confusion is unlikely to occur."

Nonetheless, the Board concluded that the letters of consent "are entitled to some probative value": "Specifically, we may infer from the fact that consent was given by both registrants that owners of the cited registrations do not believe confusion is likely."

As noted above, Applicant conceded that its mark is "essentially identical" to the cited marks. The Board not surprising found that the marks, when viewed in their entireties, are "highly similar" in appearance, sound, and connotation, and convey "highly similar" commercial impressions.

As to the strength of the marks, the Board vaguely found that in light of the existence of the cited registrations, the two registrants "have contributed to the weakening of their marks such that they are entitled only to a somewhat narrowed scope of protection that is less than that to which a stronger mark may be entitled."

Applicant's Off-Line Filter

Finally, turning to the goods, the Board noted the Examining Attorney's position that the various goods involved are "broadly identified." However, according to the Board:

applicant’s goods are all used in the fields of filtering, analyzing, distributing and monitoring fluids and gases. Registrants’ good are used in the fields of food and waste processing, air cleaning and conditioning, manufacturing, motors, engines and electrical devices used with such motors. As identified, both applicant’s and registrants’ goods are used for specific purposes that are not clearly related or encompassed by one another.

[TTABlog note: Although Applicant's identification of goods includes some restrictions as to field of use, many of the goods in the cited registrations have no use restrictions. For example, Applicant's "air filters for air conditioning units for use in connection with fluid-technical systems as well as systems for analysis of gases and liquids" would seem to be either encompassed by or related to one Registrant's "filters and air cleaners for industrial use" and "filtering systems and equipment, namely, bag filters, dust collectors, and dust separators" and to the other Registrant's "air conditioning fans; parts of air conditioning installations, namely fans."]

Scoffing at the "mere conclusory statement" of the Examining Attorney regarding the relatedness of the goods, the Board saw the PTO's likelihood of confusion claim as "amounting to only a speculative, theoretical possibility."

Based "primarily" on the dissimilarity between the goods and services, and giving "some weight" to the letter of consent, the Board found that the PTO had not met its burden to demonstrate a likelihood of confusion. And so it reversed the refusal to register.

TTABlog comment: Is there any doubt that the Board could have found the goods (at least) related if it wanted to? Why give these naked consents any weight? I am baffled about that.

Text Copyright John L. Welch 2009.


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