Thursday, October 28, 2010

WYHO? TTAB Finds "GORILLA LOFT" Not Confusingly Similar to "HYLOFT" for Storage Racks and Shelving

Would You Have Opposed? Opposers asserted that Applicant's mark GORILLA LOFT for storage racks and shelving would likely cause confusion with, and would likely dilute, their registered mark HYLOFT for shelving and storage racks and related retail store services. The Board disagreed. What do you think was the decisive du Pont factor? HyLoft, Inc. and KE Investments, Inc. v. Rapid Rack Industries, Inc., Opposition No. 91187636 (October 7, 2010) [not precedential].

The Board first dealt with several evidentiary matters, sustaining an objection to Opposer's rebuttal testimony because it should have been part of their case-in-chief, refusing to consider several declarations submitted by Opposers via notice of reliance, but accepting several late-filed testimony transcripts of Applicant.

Likelihood of confusion: Opposers claimed that their mark is famous for Section 2(d) purposes, but they failed to provide sufficient proof: Opposers submitted evidence of media references, but no evidence as to the circulation of that media and no sales or advertising figures.

As to the marks, Opposers conceded that the word "loft" has meaning for certain storage spaces. Dictionary definitions and Internet evidence established that "loft" is suggestive, if not descriptive, of storage systems. Perceptively observing that the only similarity between the marks is the term "loft," the Board found that use of that suggestive term "alone is not sufficient to support a finding that the marks GORILLA LOFT and HYLOFT are similar." Instead, the Board deemed the marks to be "readily distinguishable."

And so, despite the identity of the goods, the Board ruled that the dissimilarity of the marks outweighed all other du Pont factors and it dismissed the Section 2(d) claim.

Likelihood of dilution: Opposers could not prevail on their dilution claim: they failed to prove fame for purposes of Section 2(d), and perforce could not meet the higher fame standard for dilution.

Moreover, to establish dilution, a party must show that the marks are "identical or very substantially similar." Here the marks are not even similar, and so the dilution claim must fail.

Text Copyright John L. Welch 2010.


At 10:10 AM, Anonymous Michael Feigin, NJ Patent Attorney said...

This goes under the, "what were they thinking" category. LOFT is descriptive of what it is, so you're left with comparing GORILLA to HY and there's no similarity whatsoever.

At 12:49 PM, Anonymous Anonymous said...

Maybe this was one of those "Let's just give it a whirl and hope they default" cases.

Or "Hey this does not cost us too much, so let's force our competitor to spend some money."

But really, a trial on the merits? Why did this case not disappear with a Motion to Dismiss or MSJ.


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