TTAB Finds RLX RALPH LAUREN Not Confusingly Similar to ROLEX for Watches
Despite the fame of the ROLEX mark and the overlap of the goods and channels of trade, the Board found the marks RLX RALPH LAUREN and RALPH LAUREN RLX not likely to cause confusion with the ROLEX mark, all for watches. The dissimilarity of the marks was sufficient to overcome the other du Pont factors, leading to dismissal of the opposition. Rolex Watch U.S.A., Inc. v. PRL USA Holdings, Inc., Opposition No. 91170868 (June 7, 2012) [not precedential].
Opposer pointed to the judgment entered in its favor when PRL withdrew its application to register RLX alone, but the Board pointed out that claim preclusion does not apply because the marks are not identical. Nor does issue preclusion apply, because no issues were decided when the default judgment was entered.
Opposer asserted that third parties use the term RLX to refer to it, but the Board found the evidence of same to be minimal: four websites (two German) and a Google brand search of "rlx." Moreover, there was no information as to how many consumers have been exposed to this usage.
Finally, Opposer trumpeted its survey reporting that 61 percent of consumers perceived Opposer as the source of RLX watches. Although these results may be strong evidence as to RLX by itself, they have minimal probative value in the context of the two marks at issue.
Opposer conceded that the RALPH LAUREN mark is well known and that consumers would believe that Applicant's watches come from, or are connected in some way to, Applicant. But it posed the following question: "Would consumers believe that watches sold under the RLX RALPH LAUREN and RALPH LAUREN RLX marks have some connection with Opposer in terms of whether such watches are manufactured by or otherwise approved by Rolex when such is not the case?"
Opposer emphasized the fact that it and PRL both sponsor some of the same athletic events, for which their marks are simultaneously displayed (e.g., Wimbledon, U.S. Open). On the other hand, PRL argued that the appearance of its well-known house mark alleviates any likelihood of confusion.
The Board recognized that the addition of a house mark to another's mark does not avoid confusion, and may in fact increase confusion. But that rule does not apply when the additional matter, when taken with the house mark, conveys a different commercial impression (e.g., THE RITZ KIDS for clothing versus RITZ for kitchen utensils).
The Board found that RLX is the dominant portion of Applicant PRL's marks. Moroever, RLX, when joined with the well-known name RALPH LAUREN, suggests an expansion of the RALPH LAUREN product line (the R.L. initials plus the X).
[G]iven the different connotation and commercial impression engendered by the presence of the well-known mark RALPH LAUREN, when viewing the mark in its entirety, consumers will perceive RLX as Mr. Lauren’s initials and not an abbreviation of ROLEX. Even in the case where the RLX is emphasized ..., in view of the strength of the RALPH LAUREN mark it still creates the commercial impression of Mr. Lauren’s initials when displayed alongside the well-known RALPH LAUREN house mark.
And so the Board dismissed the opposition.
TTABlog comment: For some reason, I find RLX RALPH LAUREN more troublesome than RALPH LAUREN RLX. By the way, what do you think of this manner of display of RLX RALPH LAUREN?
Text Copyright John L. Welch 2012.