Tuesday, July 26, 2011

Test Your TTAB Judge-Ability: Are DYNATECH and DYNATEK Confusingly Similar for Auto Parts?

Before you exhaust yourself thinking about the question, let me start by clarifying the issue. Applicant sought to register the mark DYNATECH in standard character form for "engine exhaust system components, namely, pipes, collectors and mufflers ordered through specialty racing product ordering services." The PTO refused registration in view of the registered mark DYNATEK for "ignition systems for motor vehicles comprising, ignition coils and fuel injection controllers for motor vehicles; [and] crank sensor ignition triggers for motor vehicles." Confusable marks, right? Wrong! In re A-Fab, LLC, Serial No. 77639815 (July 11, 2011) [not precedential].

The marks were close enough. Applicant argued that third-party registrations of DYNATECH and similar marks required that the cited mark be given a narrow scope, but the Board found these registrations to be of limited value because only one covered goods in the automotive field, and in any case registrations alone do not indicate that consumers are familiar with are impacted by the marks.

As to the goods, the Board agreed with Applicant that there is no per se rule holding all automotive products to be related. The Examining Attorney submitted 21 third-party registrations covering both automotive ignition products and automotive exhaust products. Applicant submitted a declaration from its CEO, stating that Applicant's goods are highly specialized racing components. They are typically provided in specific sizes, designs, and configurations, and therefore are ordered with great care, usually with personalized guidance provided by Applicant to the customer.

Applicant attacked the third-party registrations by pointing out that four are not based on use and therefore have no probative value. Two are owned by the same entity, and so are redundant. That left 15, according to the Board. [I think it left 16, but who's counting? - ed.]. Of the 15 left, nine were house marks covering a wide range of automotive goods, and therefore are entitled to less probative weight. That left six, but none of those included exhaust systems sold through specialty racing products ordering services.

Although the cited registration did not contain any limitation as to channels of trade, the Board must focus on "the only relevant trade channel, namely 'specialty racing product ordering services.'" In light of the declaration of Applicant's CEO, the Board concluded that "the only overlap among customers are the careful, knowledgeable purchasers of applicant's goods." Given the specific difference in the goods, the "sophisticated decision-making involved in purchasing applicant's specialty racing exhaust components, warrant a finding that there is no likelihood of confusion."

Applicant also pointed to the lack of actual confusion despite 13 years of contemporaneous use of the involved marks, but the Board found that factor to be neutral in this ex parte context, where the Registrant has no chance to be heard.

And so the Board reversed the refusal to register.

Text Copyright John L. Welch 2011.


At 7:41 AM, Anonymous Bill Hollimon said...

Is this a primer in how to get by a 2(d) refusal or an example of how seemingly arbitrary the process has become?

At 8:05 AM, Anonymous Morris Turek said...

I think this is a pretty crazy decision. I mean, the cited registration did not have any limitations as to the channels of trade and the marks are all but identical. We have no idea how Registrant's goods are sold and whether there are overlapping customers and trade channels. And, as the Board always says, even sophisticated consumers are not immune from source confusion. It just goes to show how completely subjective and arbitrary the registration process really is. No predictability whatsoever.

At 10:51 AM, Blogger Jude said...

Bravo to the applicant's attorney for succeeding with what was available. However, I tend to agree with the other comments posts here: this is really pushing the envelope too far.

At 3:08 PM, Anonymous Anonymous said...

I say this is nuts. It should make all registered owners think the Board has no common sense.

At 8:12 PM, Anonymous Anonymous said...

I think the decision is correct. What a lot of people forget is that the Board decides cases based on the record, and the record here was decidedly thin.

At 10:16 AM, Anonymous Orrin A. Falby said...

I agree with the decision. The only evidence submitted by the EA is the third-party registrations in his attempt to show that the goods are related. The record created by the applicant refuted that and the Board weighed the relatedness of the goods factor in applicant's favor. I believe that the Board has acted consistently in the matters before it. A lot practitioners do not take the time to build a record that support their position. This applicant did and the EA did not. Its that simple.


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