Thursday, April 18, 2013

Precedential No. 16: TTAB Refuses to Consider File HIstory of Cited Registration in Section 2(d) Appeal

In this appeal from two Section 2(d) refusals to register the mark FORZA for metal mounting brackets for televisions and speakers, and for custom audio/video accessories, including cables and wires, Applicant Sela Products contended that the Board should consider certain statements made in the file history of one of the cited registrations. But there were two problems: Sela never made that file history of record during the prosecution of its own application, and even if it had, the statements were mere opinions submitted in a wholly different context and of no probative value here. In re Sela Products, LLC, 107 USPQ2d 1580 (TTAB 2013) [precedential].

The Board affirmed the first Section 2(d) refusal, finding Sela's mark likely to cause confusion with the registered mark FORZA POWER TECHNOLOGIES for surge protectors and other electrical items "for home and office use only" [POWER TECHNOLOGIES disclaimed]. Third-party registrations and website evidence demonstrated that the involved goods are related.

Sela asserted that the channels of trade and classes of customers for the goods are different, noting that registrant's goods are for "home and office use only" whereas its goods are "custom" accessories sold to professional custom installation specialists and commercial contractors. The Board pointed out that Sela's identification of goods is not so limited: do-it-yourselfers could purchase the items for their home systems. And even specialists and contractors would be purchasers of surge protectors. Moreover, purchasers are likely to encounter applicant's complementary products during the course of purchasing a television, audio or home theater system.

As noted, Sela argued that certain statements made by registrant in the file history for the FORZA POWER TECHNOLOGIES mark should have been considered by the Examining Attorney during prosecution of Sela's application, and should be considered by the Board. Analogizing the situation to that of an opposition, in which the file history of an opposed application is automatically of record, Sela contended that the Examining Attorney, functioning like a "quasi-opposer," has "introduced" this registration into the record, and therefore the file history should be considered of record for the appeal.

The Board was unmoved. There is no equivalent rule (to Rule 2.122(b)) that applies to ex parte proceedings. Moreover, the file of an opposer's pleaded registration is not automatically part of the record; it must be submitted into evidence. And even if the statements that Sela referred to were considered, they would not have changed the Board's decision. Those statements were made in a very different context: an attempt to distinguish the FORZA TECHNOLOGIES MARK over a citation of the mark FORZA for a hydrogen fuel cell power generator.

A decision maker "may not consider a party's opinion relating to the ultimate legal conclusion of likelihood of confusion (particularly in another case.) as a binding admission of fact. See Interstate Brands Corp. v. Celestial Seasonings, Inc., 198 USPQ 151, 154 (CCPA 1978). In sum, registrant's statements cannot be treated as indicating its position with respect to applicant's mark and its goods.

As to the second Section 2(d) refusal, the Board reversed, finding Sela's mark not likely to cause confusion with the registered mark FORZA MILAN! ACM 1899 & Design, shown above, for various goods, including optical and electrical cables and sound and image recording and transmission apparatus [1899 and MILAN disclaimed].

The Examining Attorney contended that FORZA is the dominant portion of the cited mark and that MILAN! will be understood as the geographic location of the company that makes the goods. Sela pointed out that the cited mark incorporates the crest of the Italian soccer  team Associazione Calcio Milan, known as "ACM" [or AC Milan - ed.], a world-renowned football club. The registration includes a translation of  FORZA as "Go!", so that the meaning of FORZA MILAN! would be in the nature of a cheer: "Go Milan!"

Based on the evidence of record, the Board had no doubt that those familiar with world soccer would readily distinguish the two marks; but even those unaware of the soccer meaning would distinguish the them. A geographic location is not normally shown in the same manner as MILAN! in the cited mark, and so the Board did not view FORZA as the dominant element of the cited mark: consumers will see that as part of the phrase FORZA MILAN! And the design element of the cited mark is large and noticeable, further distinguishing the marks.

The Board concluded that any similarities between Sela's mark and this cited mark are outweighed by the differences in appearance and commercial impression (and in the case of soccer aficionados, connotation). 

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Text Copyright John L. Welch 2013.


At 9:59 AM, Anonymous Anonymous said...

This is a unique decision as it has affirmed a 2d and refused a 2d. Do we know of any other cases such as this?


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