Wednesday, December 08, 2010

Finding USPS Blue Mailbox Famous, TTAB Sustains 2(d) and 2(a) Opposition

The fame of the United States Postal Service's blue collection box design mark carried the USPS to victory in this Section 2(d) and 2(a) opposition. The Board found Applicant's mark (shown immediately below) for key return services and related goods, likely to cause confusion with the USPS mark and like to create a false association with the USPS. United States Postal Service v. Lost Key Rewards, Inc., 102 USPQ2d 1595 ( TTAB 2010) [not precedential].

Section 2(d): The USPS proved that it has used its collections boxes in the shape of the two registered marks shown below since about 1894, and since 1971 the boxes have been colored blue. There are some 180,000 collection boxes across the country.

The USPS extensively advertises and promotes its goods and services, with the blue collection box featured prominently. The Board found that the particular color blue "is as equally a prominent indicator of USPS origin as is the shape of the box alone."

The USPS also licenses the mark for a wide range of goods and services, including two licensees who use the blue box in connection with lost key services.

Applicant admitted the validity of the USPS mark and its awareness thereof. Its services will use USPS delivery services and mailboxes.

The Board concluded that the record "establishes without question that the USPS collection box, i.e., its shape and blue color, is 'famous' as that term is used in Trademark Law."

The broad exposure of the general public to the USPS collection boxes in the noted shape and color, as well as the representation of the collection boxes on stamps, in movies and other media have rendered the collection box in the noted shape and color a ubiquitous symbol of the USPS.

Moreover, the Board noted, as the fame of a mark increases, a lesser degree of similarity is necessary to show likely confusion.

Applicant's mark includes a collection box that is "substantially similar [to the USPS design] in certain key elements, namely, that it stands on legs, that it has a curved top, and that it is blue." The Board deemed the blue collection box in the applied-for mark to be at least equally prominent as the word portion, and it concluded that Applicant's marks is "sufficiently similar in at least appearance, connotation and commercial impression" to the USPS mark that, if used on similar or related goods/services, confusion is likely.

As to Applicant's goods and services, the Board observed that the services are identical to key return services rendered by the USPS's licensees. Applicant's goods are necessary and significant aspects of its services, and would be the same for the services of USPS's licensees. And so the Board concluded that the goods and services are sufficiently related to USPS's services that confusion is likely.

Section 2(a): There was no question that the USPS is an institution within the meaning of Section 2(a). Moreover, the round-top mailbox design "is a famous mark and a symbol that is ubiquitous and uniquely indicative of the USPS."

The Board ruled that Applicant's mark is a "close approximation of the identity of the USPS."

Because the evidence of record shows that competing private delivery services use collection box designs that are different in shape and color from the USPS collection box and from each other, applicant’s use in its mark of a collection box substantially similar to the USPS collection box points uniquely and unmistakably to the USPS.

In view of the fame of the USPS mark and Applicant's use of the blue collection box in its mark, consumers will be led to presume that applicant is connected with or authorized by the USPS.

And so the Board concluded that Applicant's mark falsely suggests a connection with the USPS in violation of Section 2(a).

TTABlog comment: I guess this Applicant should have sought a license, huh? Basically, it lost this key decision without any reward.

Text Copyright John L. Welch 2010.


At 10:53 AM, Anonymous Alex said...

I'm curious - couldn't the applicant have argued a "fair use" defense? I know the use was commercial but arguably not that substantial. The applicant probably only intended to show that keys should be returned by U.S. Mail and it's not like there is any other mail service available here in the U.S.

At 12:47 PM, Anonymous Anonymous said...

This decision seems to obliterate the 2(a) requirement that the defendant's mark be the same or a close approximation of the plaintiff's previously used name or identity. When has the USPS been known as its blue mailbox design?

At 9:35 PM, Blogger John M.C. said...

Replying to Alex's comment: If and only if the blue mailbox the only way to communicate the idea "mail service"-- and it certainly isn't the case.


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