Monday, May 04, 2009

"BIG O TIRES" TTAB Challenge to "BIGG WHEELS" for Automobile Wheels Goes Flat

Although the Board found the BIG O TIRES mark to be inherently distinctive and strong for vehicle tires and related services, and indeed possessed of "niche market fame" in the Midwest and west of the Mississippi, it dismissed an opposition to the mark BIGG WHEELS for "wheels for automobiles" [WHEELS disclaimed]. The Board found the applied-for mark not likely to cause confusion or to dilute Opposer's mark in light of the dissimilarities between the marks. Big O Tires, LLC v. Wheel Specialties, LTD., Opposition No. 91163791 (April 3, 2009) [not precedential].

Big O pleaded ownership of 15 registered mark in its notice of opposition, but the Board limited its analysis to just the closest one: BIG O TIRES for tires, retail tire store services, and related goods and services. Based on Opposer's use of the BIG O TIRES mark for more than 40 years, its "impressive" sales figures and its "substantial" advertising expenditures, its widespread promotion and the media recognition of the mark, the Board found that the mark "has achieved regional fame for purposes of our likelihood of confusion analysis." This "niche market fame" led the Board to find that the BIG O TIRES mark is "strong and entitled to a broad scope of protection."

As to the involved goods and services, the board found Applicant's wheels to be "closely related to opposer's tires and retail store service featuring, among other vehicle parts and accessories, tires."

Turning to the marks, however, the Board found them different in appearance, sound, and connotation.

The word "big" is defined, inter alia, as "large or great in dimensions, bulk, or extent; also large or great in quantity, number, or amount … [and] outstandingly worthy or able." Merriam Webster Online Dictionary, 2009. There is nothing in the record to suggest any particular meaning of opposer's mark in the context of tires. The only meaning we can attribute to opposer's mark is a large letter "O." On the other hand, the term "BIG(G)" in applicant's marks evokes an image of dimensionally large and outstandingly worthy wheels, a must have for any auto enthusiast. It is this play of the word "big(g)" on the term "wheels" that creates a meaning and connotation in applicant's mark that is distinct from that of opposer’s BIG O TIRES mark.

In short, the Board found that the dissimilarities in the marks "outweigh all other relevant du Pont factors."

With regard to Opposer's other BIG O marks, they create essentially the same commercial impression as the BIG O TIRES mark, and therefore the same analysis applies. As to its BIG FOOT marks, "there are differences in connotation between those marks and applicant's mark that obviate any similarities."

The Big O

The Board then gave short shrift to Big O's dilution claim, pointing out that a dilution claimant must prove more than confusing similarity between the marks at issue: "it must show that the marks are 'identical or very substantially similar.'" Here, the Board found that the marks at issue are not confusingly similar, and so they obviously do not meet the higher dilution standard. The Board therefore declined to consider the other elements of a dilution claim, including "whether opposer's niche fame suffices for establishing dilution."

TTABlog comment: When the dilution statute was revised in 2006, niche market fame was no longer sufficient to qualify a mark for dilution protection. So says dilution expert Scot Duvall in his article, "The Trademark Dilution Revision Act of 2006: Balanced Protection for Famous Brands" 97 Trademark Reporter, 1252, 1261 (November-December 2007). But would the revised statute apply in this opposition, which was commenced in 2005 and involves a mark that was in use since 2004?

Text Copyright John L. Welch 2009.


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