Wednesday, December 28, 2011

WYHRR? TTAB Reverses 2(d) Refusal of MLOCKER Over "M" Designs for Differentials

Applicant Eaton Corp. applied to register the mark MLOCKER for "land vehicle differential," but the PTO refused registration under section 2(d), finding the mark likely to cause confusion with the two registered marks shown below, for various automotive goods, including "differential carrier assemblies, differentials and parts thereof." If you were an Examining Attorney, Would You Have Refused Registration [WYHRR]? In re Eaton Corp., Serial No. 85030456 (December 8, 2011) [not precedential].

The Board found the involved goods to be identical or closely related. Consequently, it presumed that the goods travel in the same, normal channels of trade to the same, usual purchasers of such goods.

Eaton argued that the purchasers would be sophisticated and knowledgeable about the specifications of the goods. The Board, however, pointed out that even sophisticated purchasers are not immune to source confusion when the goods are identical or related and the marks highly similar. [So much for the sophistication argument! - ed.].

Switching gears, the Board turned to a comparison of the marks. The Examining Attorney contended that they are "legally identical," pointing to third-party registrations and prior registrations owned by Eaton in which LOCKER is disclaimed for similar goods, and to Internet webpages in which LOCKER is used to describe a feature or characteristic of differentials.

As a result, the examining attorney argues “the applicant's addition of the generic term LOCKER is of minor significance when looking at the overall commercial impression. The dominant portion of applicant’s and registrant's marks is the letter M."

The Board took a differential view: even assuming that the cited marks comprise a stylized letter M, the involved marks "differ sharply" in appearance and sound. And even if the word LOCKER is a weak formative for these goods, it still contributes to the visual and aural impression created by Eaton's mark.

Moreover, the cited marks are stylized letter marks, which "partake of both visual and oral indicia." These marks are "in the gray region between pure design marks which cannot be vocalized and work marks which are clearly intended to be." In short, in this trademark twilight zone, a stylized letter design "can not be treated simply as a word mark." Here, the stylization in the cited mark is "so high that they are more akin to design marks rather than simply stylized displays of the letter 'M.'"

Considering the marks in their entireties we find that registrant’s marks are so highly stylized that they project the image of design marks and the letter takes on its significance only by reference to registrant’s trade name Mohawk Manufacturing & Supply Co., Inc. *** In contrast, the significance of applicant’s mark is focused on the letters MLOCKER in standard characters, notwithstanding the weakness of LOCKER in relation to the goods. Thus, we find that the marks are not so similar in sound, appearance, connotation or commercial impression, that, merely because such marks share the letter M, confusion as to origin or association is likely.

And so the Board reversed the refusal to register.

TTABlog comment: Well, would you have refused registration?

Text Copyright John L. Welch 2011.


At 9:21 AM, Anonymous Anonymous said...

I probably would have refused registration, but I would not have argued the marks are legally identical. And I might have withdrawn the refusal rather than send a Final.
It is interesting the Judge went though an analysis of several duPont factors and appeared to be balancing them, but abruptly stated the dissilialrity of the marks was determinative.

At 9:52 AM, Anonymous Anonymous said...

Nice to see the board get one right.

At 12:56 PM, Anonymous Anonymous said...

Anonymous No. 1: Why would you probably have issued the refusal, only to withdraw it rather than sending a final (assuming the applicant's response didn't present some compelling evidence)? You either believe the refusal is proper or you don't.

When examining attorneys issue initial refusals just to see how an applicant responds, it's a waste of everyone's time (and money).

At 10:10 PM, Blogger Ron Coleman said...

This post just embodies everything I like about trademark law when it's practiced right, and trademark law blogging when it's done right, too.


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