Friday, August 13, 2010

TTAB Reverses 2(d) Refusal, Sophistication of Purchasers a Key Factor

Despite the near identity of the marks, the Board reversed Section 2(d) refusals to register V-TEC (in standard character and stylized form) for "custom wheels for vehicles," finding the mark not likely to cause confusion with the registered mark VTEC for vehicles and engines. The care with which consumers purchase custom wheels, vehicles, and engines was a major factor in the Board's determination. In re Vision Wheel, Inc., Serial Nos. 77498758 and 77498755 (July 28, 2010) [not precedential].

The marks: Not surprisingly, the Board found the marks to be "very similar in sound, appearance, and commercial impression." As to connotation, Applicant Vision Wheel argued that the mark in the registration is always used with certain house marks of Honda (the registrant) to refer to certain engine technology, but the Board pointed out that it must consider the involved marks as they appear on the drawing pages, and in that view the marks have "no particular connotation distinct from each other."

Vision Wheel also asserted that the cited mark is weak because it "stands for descriptive wording." This, however, was an impermissible collateral attack on the registration; furthermore, an acronym is merely descriptive if it is "readily understood by relevant purchasers to be 'substantially synonymous' with the merely descriptive wording it represents or stands for." Although there was evidence that VTEC is an abbreviation for "variable valve timing and lift electronic," the evidence was insufficient "to deem this term so weak that the mere addition of a hyphen or stylization distinguishes the marks enough to obviate likely confusion."

And so the Board concluded that the similarities in the marks outweigh "any possible dissimilarity in connotation that may be perceived."

The goods: The Examining Attorney maintained that, in the field of land vehicles and related parts and accessories, the Board has consistently "upheld relatedness analysis determinations." She provided website evidence showing that Honda offers replacement wheels for vehicles, asserting that consumers who encounter Applicant's V-TEC mark on wheels would likely be confused, "given that these consumers would also encounter the VTEC mark on automobiles, especially factoring that car manufacturers produce and market many parts of new automobiles, including wheels, under the same or similar marks." The evidence also included excerpts from a website selling both custom wheels and refurbished OEM wheels.

Vision Wheel argued that the Examining Attorney did not provide sufficient evident to establish a prima facie case, that there is no per se rule that all automobile makers are original equipment manufactures of wheels and engines, and that consumers who purchase wheels or vehicle parts must first identify the proper year, make, and model of the vehicle.

The Board agreed with Vision:

We are not convinced by the limited evidence of record that automobiles and/or vehicle engines from the OEM are sufficiently commercially related to custom, aftermarket wheels such that confusion is likely. While the evidence shows that car manufacturers use their house marks on various parts of their automobiles and their factory replacement parts, it does not show that they use various product or secondary marks in such a ubiquitous fashion and there is no evidence to establish that VTEC is a house mark. The fact that one website may offer refurbished OEM wheels along with custom wheels does not establish that custom wheels and factory replacement wheels regularly travel in the same channels of trade. More importantly, this does not establish that automobiles and engines travel in the same channel of trade as custom wheels, and, in fact, the evidence shows that automobiles are sold through authorized dealer networks.

Moreover, the Board found that "the conditions of sale minimize the potential for confusion."

As the record shows each purchase of a wheel necessarily involves a careful process wherein a consumer must identify the year, manufacturer and model of a specific vehicle. In addition, automobiles and engines are very expensive items and custom wheels cannot be characterized as inexpensive general consumer items.

And so the Board reversed the refusals, concluding that the Examining Attorney had failed to make a prima facie case of likely confusion.

Text Copyright John L. Welch 2010.


At 9:46 AM, Anonymous Orrin A. Falby said...

Let's if the applied-for mark survives an opposition. There might be a dilution claim coming.


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