Tuesday, December 24, 2013

Different Trade Channels Preclude Confusion of BENTLEY marks, Says TTAB

The Board reversed a refusal to register the mark BENTLEY for perfume, cosmetics, and glassware "sold only in authorized vehicle dealers and authorized vehicle service outlets," finding the mark not likely to cause confusion with the marks BENTLEY, BENTLEY UNIVERSITY, and BENTLEY ORGANIC for similar or identical goods. Applicant Bentley Motors successfully argued that, because its goods are sold only through the "very tightly-knit" Bentley circle of dealers and service outlets, to an "niche, affluent clientele," confusion is unlikely. The Board agreed, apparently having never heard of reverse confusion. In re Bentley Motors Ltd., Serial No. 85325994 (December 3, 2013) [not precedential].

The Examining Attorney argued that, since the cited registrations are unrestricted as to channels of trade, the goods are presumed to travel in all normal channels of trade. The Board  observed, however, that there was no evidence that the ordinary channels of trade for registrants' goods include Bentley's authorized dealers and service outlets.

Put another way, applicant’s goods are marketed solely and exclusively through dealers and service outlets for Bentley and Rolls Royce automobiles. The record does not support the proposition that the goods identified in the cited registrations normally move in these channels of trade, notwithstanding that they do not recite any trade channel limitations. The burden is on the Office to show that the ordinary trade channels for registrants’ goods overlap with applicant’s very limited trade channel.

The Board found this factor to be dispositive, and it therefore reversed the refusal.

Read comments and post your comment here.

TTABlog note: Hold on just a second. What about reverse confusion? What about customers seeing BENTLEY brand products in the normal channels of trade, and thinking they are sold by applicant? Where's the evidence that the general consuming public is aware that Bentley's goods are sold only by authorized dealers?

For a different take on this issue, see the ORION case, TTABlogged here, wherein L.L. Bean's application to register that mark ORION for golf clubs and fishing rods was rejected, despite Bean's argument that the trade channels "cannot overlap" because its goods are sold only by itself, and because the customers for these goods are sophisticated and discriminating.

Text Copyright John L. Welch 2013.


At 9:21 AM, Anonymous Gene Bolmarcich, Esq. said...

Perhaps it is theoretically unsound to consider reverse confusion when the two marks already coexist. This is not the usual context for reverse confusion. If reverse confusion applies here then one must assume that consumers are already in a state of confusion over the existence of Bentley (the prior) fragrances in the marketplace. The counter argument is of course that everything changes when Bentley (the famous) enters with a fragrance BUT that assumes that the reverse confusion relates to the two fragrances whereas of course we all know it's as to the marks and bentley is known as an automobile brand first and foremost and THAT's what (if anything) would cause the reverse confusion.

At 9:25 AM, Anonymous Gene Bolmarcich, Esq. said...

Also see Sierra On-Line Inc. v Sierra Club (TTAB 1999). This scenario here a famous brand owner seeks to extend its mark into already occupied territory albeit only through its "own" channel of trade screams for consistency. Why not accept the reality of the situation and just allow the registration to reflect the marketplace?

At 9:46 AM, Anonymous Keith Danish said...

What about post-purchase confusion?

At 10:13 AM, Anonymous Gene Bolmarcich, Esq. said...

Post sale confusion is an interesting twist on the likelihood of confusion analysis because it completely throws out the channels of trade factor so it would seem to be inconsistent with trademark law but of course it has been applied in court settings although I'm not aware of any TTAB case that has applied or considered it.

At 11:59 AM, Anonymous John Ward said...

Love that new car smell.

At 12:31 PM, Blogger Kevin W. Grierson said...

Given the current state of famous mark owners licensing their marks for everything in creation, it's hard to believe there isn't some sort of confusion here. BENTLEY, by itself, might be seen as not playing off the auto manufacturer's mark, but the use of the "flying B" symbol in the example shows a pretty clear intent to trade on the auto manufacturer's good will. This might be one of those cases where an applicant gets a registration but loses in court.

At 3:20 PM, Blogger John L. Welch said...

Here's a TTAB reverse confusion case:
If you put "reverse confusion" in the TTABlog search box, you'll find more.

At 10:32 AM, Blogger Ron Coleman said...

I think the reverse confusion argument loses here because of Bentley's uber-elite status. Unlike, for example, the situation in the "Benny Goodman case" reported here last year, while it's easy to imagine the sort of stuff that could in theory be licensed by Bentley, Bentley doesn't roll that way. The consumer, arguably, knows this, making confusion less likely.

I agree, as I usually do, with Kevin: they may get killed on dilution, but that won't help at the PTO.

At 7:23 AM, Blogger John L. Welch said...

Bentley Motors is the applicant. No one is trading off its good will by using the wings design. I doubt the consuming public knows much about Bentley automobiles at all, let alone that Bentley "doesn't roll that way."


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