Tuesday, August 04, 2009

Precedential No. 31: In an Accelerated Decision, TTAB Sustains Schick Opposition to "SLICK ULTRA PLUS" for Disposable Razors

One suspects that this rather straightforward Section 2(d) decision was deemed precedential because the parties agreed to resolve the matter via the Board's Accelerated Case Resolution (ACR) procedure. The Board found Green Planet's mark SLICK ULTRA PLUS for disposable razors likely to cause confusion with the famous, registered mark SCHICK for "razors and razor blades," and so it sustained the opposition. Eveready Battery Company, Inc. v. Green Planet, Inc., 91 USPQ2d 1511 (TTAB 2009) [precedential].

On February 9, 2009, after the Board had denied Schick's motion for summary judgment, the parties signed on to ACR and agreed to "forego trial and proceed directly to briefing the case on the merits." They stipulated to Schick's priority, agreed that the summary judgment evidence would serve in lieu of trial evidence, and allowed submission of additional evidence with each party's trial brief. In less than six months, they had a decision.

The key issue, of course, was the similarity of the marks. The goods were in part identical and otherwise closely related, the channels of trade and classes of customers legally identical, and the purchasers or these low cost, ordinary consumer items likely to exercise "less care in their purchasing decisions" and "more likely to be confused as to the source of the goods."

The Board next considered the fame of the SCHICK mark, noting that "a strong mark ... casts a long shadow which competitors must avoid." [So, would you say that a generic term casts no shadow at all? - ed.] The record showed that the SCHICK mark has been in use for razors since 1926, that from 2000-2008, Opposer sold more than $2 billion of its razors and razor blades, and annually sold $100 million of its disposable razors alone. From 2001 to 2007, it spent $300 million in advertising through national magazines and radio and television shows. Consequently, the Board concluded that, for Section 2(d) purposes, SCHICK is a famous mark.

As to the marks, the Board again stated that when the goods are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion. [Toss in the fame of the SCHICK mark, and Green Planet's chances of winning were somewhere between slim and none.] It found the word SLICK to be the dominant portion of Applicant's mark, pointing to evidence of third-party use of PLUS in the razor field and noting that ULTRA has a laudatory meaning and is highly suggestive. As to appearance:

Although the interior letters “CH” and “L” are different, these differences are not likely to be noticed by consumers who may purchase razor blades, an inexpensive item, without great care, and who, because of their familiarity with the famous SCHICK mark, are likely to “misread” SLICK in a quick glance at the mark. Because of the highly similar nature of the first word of applicant’s mark and the entirety of opposer’s famous mark, the similarities in appearance between SCHICK and SLICK ULTRA PLUS outweigh the differences.

The Board noted that the marks have different connotations but found that "the similarities in appearance and sound outweigh their differences in meaning." Moreover, the marks "convey similar commercial impressions."

Considering the relevant du Pont factors, the Board sustained the opposition.

TTABlog comment: ACR seems to be a good way to wrap up a case once the summary judgment route has been tried. What does each party really give up? The chance to cross-examine the other party's witnesses during the trial period. What's to gain? Saved time and expenses and a quicker resolution.

Text Copyright John L. Welch 2009.


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