Tuesday, April 23, 2013

TTAB Finds "Translucent Blue" Color Confusable with "Blue" Color for Fuel Additives

The Board affirmed a Section 2(d) refusal to register the color “translucent blue” for “non-chemical additives for oils and fuels,” finding the mark likely to cause confusion with a mark comprising the color “blue” for a “petroleum based fuel additive.” Applicant contended that consumers would readily distinguish its goods having translucent blue containers, from Registrant’s blue product contained in a transparent tube. The Board disagreed. In re Star-Brite Distributing, Inc., Serial No. 77762719 (March 29, 2013) [not precedential].

The goods: Third-party registrations showed that Applicant’s identification of goods is broad enough to encompass the more specific goods of the cited registration, i.e., that Applicant’s non-chemical additives could be petroleum based. Internet evidence indicated that enzyme fuel treatments, as a non-chemical based fuel additive, and petroleum based fuel additives have the same purpose of treating fuels and oils, and are marketed to the same consumers who use these products in their engines and vehicles. The Examining Attorney also proffered several used-based third-party registrations covering the goods in both the subject application and the cited registration.

Moreover, because there are no limitations as to channels of trade or classes of purchasers in the identifications of goods in the application or registration, the Board must presume that the involved goods move in the same, normal channels of trade to all classes of purchasers for those goods. The evidence confirmed that the goods are sold through automotive stores, marine stores and hardware stores.

The marks: Not surprisingly, when "the marks at issue are non-literal design marks, the similarity of the marks must be decided primarily on the basis of visual similarity." In other words, the Board applies a subjective, eye-ball test. Of course, when the goods are closely related, the degree of similarity necessary to support a finding of likely confusion is reduced.

In considering the marks, the Board must compare them as they appear in the drawings. However, because the record includes descriptions of the involved marks, those descriptions must also be considered in determining the commercial impressions conveyed to relevant consumers.

Registrant’s mark is described as follows: "'The drawing is lined for the color blue, and color is claimed as a feature of the mark. The mark consists of the color blue as applied to the goods visible through a transparent tube." Applicant’s mark is described thusly: "The color(s) translucent blue is/are claimed as a feature of the mark. The mark consists of translucent blue to be used for a container body and not the cap."

Regardless of how registrant’s mark appears on its specimen of use, the Board must decide on the basis of the information appearing on the face of the registration, and so registrant’s mark covers all shades of "blue." Consequently, the Board found that in the context of the goods in this case, "registrant’s and applicant’s colors are identical." Because Registrant’s color is not restricted to any particular shade of blue, it encompasses “translucent blue.”

The fact that Applicant’s color appears on the containers while Registrant's color appears on the goods was irrelevant, since Registrants goods are visible through its transparent tubes.

The Board noted, as it did in Cook Medical, that Applicant could have sought a Section 18 restriction to the cited registration, limiting the registration to the shade of blue actually used in the marketplace.

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Text Copyright John L. Welch 2013.


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