Tuesday, December 21, 2010

Test Your TTAB Judge-Ability: Are "CORVOLTTE" and "CORVETTE" Confusingly Similar for Automobiles?

Pro se Applicant Jim M. Sweeney sought to register the mark CORVOLTTE for "electric vehicles, namely, automobiles," but General Motors opposed, claiming likelihood of confusion with its mark CORVETTE for automobiles. GM failed to provide proof of the fame of its mark and also failed to submit properly its registration for CORVETTE for automobiles. Guess who won? General Motors LLC v. Jim M. Sweeney, Opposition No. 91188584 (December 10, 2010) [not precedential].

GM, but apparently only with the help of a partial bail-out from Applicant Sweeney, who admitted in his answer that GM owns the registration for CORVETTE for automobiles and that GM has used the mark since 1952.

GM did manage to get several registrations into evidence via the status-and-title route, but not its "most relevant registration," the one for automobiles. It failed to comply with even the lenient approach permitted since Research In Motion Limited v. NBOR Corporation, 92 USPQ2d 1926 (TTAB 2009) [precedential]. [TTABlogged here]: namely, submission of electronic records from TARR by way of a notice of reliance.

GM pleaded fame (and even included a dilution claim), but it did not provide any sales or advertising evidence, nor any proof of the extent of the mark's renown. Its reliance on a Wikipedia entry and several Internet excerpts was futile, since such evidence is not admissible to prove the truth of what these items say . In short, GM's proofs fell short. Moreover, as to its dilution claim, it failed to plead that its CORVETTE mark became famous prior to Sweeney's application filing date.

Nonetheless, the Board found the goods to be identical, and it therefore presumed that they travel in the same trade channels to the same classes of customers. [TTABlog query: Sweeney did not admit that the automobile registration was valid and subsisting, only that it was owned by GM, and so that registration was not properly in evidence. So it appears (and it's not very clear from the opinion) that GM had to rely on its common law rights to the mark CORVETTE for automobiles. Doesn't that mean that GM should have been required to prove its channels of trade and its classes of customers? In other words, without its automobile registration in evidence, is GM entitled to a presumption that its autos travel in the normal channels of trade to the normal classes of customers?]

As to the marks, since the goods are identical, the degree of similarity of the marks necessary to support a likelihood of confusion finding is decreased. The Board concluded that the appearance and sound of the marks are "more similar than dissimilar." As to meaning or connotation, the word "corvette" means a "lightly armed, fast ship." Applicant's mark suggests a connection with electricity. Nonetheless, the Board found the points of similarity in the marks to outweigh the dissimilarities.

Balancing the du Pont factors, it found the marks to be confusingly similar and it sustained the opposition.

TTABlog comment: This case nearly turned into a car wreck for GM. It could have won this case in a breeze, but it lurched and sputtered across the finish line, more like a Corvair than a Corvette.

Text Copyright John L. Welch 2010.


At 8:32 AM, Anonymous The Cub Fan (Keith Danish) said...

As a Corvette owner/fanatic, I suggest that GM put someone else in the driver's seat next time it seeks to protect its famous brand name.

At 9:54 PM, Anonymous Anonymous said...

As an in-house trademark lawyer for another very famous brand, I find this horrifying. We go to extreme lengths to gather and catalog our evidence of fame. It would never occur to me to try to cite Wikipedia! Thanks for this.


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