Tuesday, February 25, 2014

Test Your TTAB Judge-Ability: Are Trade Association Services Related to Motor Oil?

Examining Attorney Doritt Carroll refused registration of the mark BLUE IS THE NEW GREEN for "trade association services, namely, promoting the interests of Pennsylvania independent oil and natural gas producers, marketers, service companies and related businesses," finding the mark likely to cause confusion with the identical mark, registered for "motor oils; lubricants for motor vehicles." Applicant PIOGA appealed. How do you think this came out? In re The Pennsylvania Independent Oil and Gas Association, Serial No. 85514044 (February 21, 2014) [not precedential].

Because the involved marks are identical, only a "viable relationship" between the goods or services need be shown to support a finding of likelihood of confusion. The goods/services need not be identical or even competitive, as long as they are related in some manner or that some circumstances surrounding their marketing would lead to a mistaken belief that there is an association between the providers thereof.

PIOGA's recitation of services may be read to include the promotion of the interests of those who produce any type of oil and of those related companies that market oil products, including "motor oils." Therefore, based on a plain reading of the application and cited registration, the involved services and goods are related.

As to channels of trade, registrant's motor oils may be promoted by applicant's trade association services. Moreover, consumers of oil, who purchase registrant's goods, are likely targets for PIOGA's promotional services.

As to consumer sophistication, the Board observed once again that "even sophisticated buyers are not immune to source confusion where, as here, the marks are identical."

Balancing the du Pont factors, the Board found confusion likely, and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Well, how did you do? Is this more of a case of reverse confusion, where the oil company is thought to be impinging on the trade association mark?

Text Copyright John L. Welch 2014.


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