Finding "U.S. CHAMBER OF COMMERCE" Famous But Inherently Weak, TTAB Dismisses 2(d) Cancellation Petition
In a 107-page opinion, the Board dismissed a petition for cancellation of a registration of the mark UNITED STATES HISPANIC CHAMBER OF COMMERCE & Design (shown below) for "chamber of commerce services, namely promoting business by and among Hispanic businesses and corporate America while fostering procurement and economic development opportunities as well as commercial and financial relations by and among Hispanic businesses with the general business community" [UNITED STATES HISPANIC CHAMBER OF COMMERCE disclaimed], finding the mark not likely to cause confusion with the registered mark U.S. CHAMBER OF COMMERCE for "association services, namely promoting the interest of business men and women." Although the parties’ services and trade channels are similar, and petitioner's mark has achieved a degree of fame, those facts were "simply outweighed by the inherent weakness of petitioner’s mark and the resulting narrow scope of protection it is entitled to." The Chamber of Commerce of the United States of America v. United States Hispanic Chamber of Commerce, Cancellation No. 92045876 (December 31, 2012) [not precedential].
Respondent's counterclaims: The Board first dealt with Respondent's counterclaims for cancellation of three registrations owned by petitioner, for the marks U.S. CHAMBER OF COMMERCE, CHAMBER OF COMMERCE OF THE UNITED STATES OF AMERICA, and U.S. CHAMBER, but the Board dismissed those counterclaims. The Board agreed that CHAMBER and CHAMBER OF COMMERCE are generic for "association services, namely promoting the interest of business men and women," but the remainder of the marks are "merely descriptive and/or geographically descriptive terms as applied to the relevant genus of services."
[T]he evidence does not establish that the relevant public refers to or would refer to any of these third-party organizations [identified by Respondent}, such as The United States African American Chamber of Commerce ..., generically as "a U.S. Chamber," or "a U.S. Chamber of Commerce," or "a Chamber of Commerce of the United States of America."
Petitioner's cancellation claim: Not surprisingly, the Board found the “chamber of commerce” services of respondent’s registration to be "highly similar and related" to the “association services” identified of petitioner’s registration. The trade channels for the involved services are also "highly similar." As to the conditions of purchase, the Board noted that not all of the purchasers would be sophisticated, but it found this du Pont factor to be neutral.
Turning to the "critical issue," the strength of petitioner's mark, the Board found that petitioner's mark has achieved a degree of fame for purposes of the fifth du Pont factor.
However, we also find that the inherent weakness of petitioner’s mark and the evidence in the record of third-party use of similar marks for similar services under the sixth du Pont factor supports a finding that petitioner’s mark is highly descriptive and inherently weak as applied to the relevant services in this case. On balance, we find that the marketplace fame of petitioner’s mark is effectively outweighed by the inherent weakness of that mark for purposes of determining the scope of protection to which the mark is entitled.
The record included evidence of a large number (45) of third-party chamber of commerce organizations operating in this country, using names or marks that include the generic words "CHAMBER OF COMMERCE" and some formative of the highly descriptive and/or geographically descriptive designation "U.S." or "UNITED STATES." For example, United States African American Chamber of Commerce, United States Black Chamber of Commerce, United States American Indian Chamber of Commerce, and United States Christian Chamber of Commerce. In addition, hundreds of organizations combine CHAMBER OF COMMERCE with the descriptive and/or geographically descriptive "AMERICA(N)-formative" in their marks.
As to the similarity of the marks, the Board found that respondent's mark is dominated by the design element including the seal, the letter "H," and the eagle feature, and that this design element suffices "to immediately and clearly distinguish the two marks in terms of appearance and commercial impression.
Respondent claimed that actual confusion had occurred, and it presented testimony from four witnesses. The Board reviewed their testimony in detail [pages 63-95] and found it to be unpersuasive. Since actual confusion is not required to prove likely confusion, the Board considered this factor to be neutral.
Finally, under the 10th du Pont factor, the Board considered the "market interface between the parties." The record revealed a ten-year relationship between the parties, which included "longtime and frequent collaboration." Petitioner’s failure during that period to object to respondent's use of its mark "is persuasive evidence which is 'indicative of lack of confusion' under factor 10(d)."
Balancing the relevant du Pont factors, the Board found that "the scope of protection to which petitioner’s mark is entitled is not so broad as to preclude respondent from registering its fundamentally dissimilar mark. Therefore, the Board dismissed the petition for cancellation.
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Text Copyright John L. Welch.