Friday, May 08, 2015

TTAB Dismisses OMEGA Opposition, Finding Tactical Protective Clothing and Watches Unrelated

The Board dismissed this opposition to registration of the marks Ωmega and Ωmega Elite, in the stylized forms shown below, for protective clothing and bags for technical gear, finding the marks not likely to cause confusion with the (allegedly) previously-used marks OMEGA and the Greek letter “Ω”, for clothing, watches, timing equipment, and sports accessories, and the registered marks OMEGA and variations thereof for watches and timing equipment. The Board also dismissed opposer’s claims of non-use, abandonment and fraud. Omega S.A. (Omega AG) (Omega Ltd.) v. Alliant Techsystems Inc., 118 USPQ2d 1289 (TTAB 2015) [not precedential].

Likelihood of Confusion: The Board first found that opposer’s mark OMEGA is famous for watches, in light of opposer’s use of the mark for more than 100 years, significant sales, extensive advertising, widespread media attention, and association with major sports events and celebrities.

As to the marks, the Board not surprisingly found applicants Omega stylized mark to be quite similar to opposer’s stylized OMEGA mark, since the Greek letter is the first letter in each mark. Applicant’s Omega Elite mark is more similar than dissimilar to opposer’s marks, the word “Elite” being laudatorily descriptive and therefore entitled to less weight in the likelihood of confusion analysis. In short, this first du Pont factor weighed in favor of opposer.

Applicant submitted dozens of third-party registrations, for marks comprising or containing the word “omega” or the Greek letter, as well as Internet printouts displaying use of such marks. However the vast majority of the registrations and printouts were for goods and services unrelated to those of opposer and applicant. However, several were probative, and although there was no evidence of the extent of use of these marks, the Board was satisfied that “the public may have been exposed to offers for sale of or advertisements for OMEGA-branded goods which are similar or at least related to Applicant’s goods.” The Board concluded that this evidence, given its limitations, slightly favored applicant.

Although opposer introduced some evidence of use of OMEGA in connection with clothing, sports accessories, and other goods besides watches, its evidence did not establish “technical trademark use,” nor any use prior to applicant’s filing dates.

The Board was not persuaded that opposer’s goods were related to applicant’s goods. Opposer pointed to “Omega-branded [promotional] life preservers” and “starting guns,” but there was no proof that these items qualified as “goods in trade,” or that opposer sold these goods or made any use of OMEGA with them, prior to applicant’s filing date. Moreover, “starting guns” are not weapons and are unrelated to applicant’s tactical gear. Likewise, opposer’s “timekeeping services," although sometimes provided for events that include guns (e.g., biathlons), are unrelated to applicant’s goods.

Opposer’s arguments regarding channels of trade and classes of purchasers were unsupported by evidence. Applicant primarily offers its goods via catalog targeted to military, law enforcement, and other customers seeking tactical gear. Opposer’s goods are sold through its own retail stores, as well as in authorized dealers and boutiques. It utilizes “celebrity ambassadors” and prominent publications to promote its products. OMEGA brand watches are priced from $3,000 upward.

The Board noted that neither the opposed applications nor the pleaded registrations have any limitations as to channels of trade or classes of consumers, but the Board asserted that this “only means that the ‘goods are presumed to travel in all normal channels to all prospective purchasers for the relevant goods.’” [This seems to ignore the black letter law that one may not limit the identification of goods by means of extrinsic evidence of actual usage - ed.]. Here the actual channels of trade are much different. Moreover, the fact that some consumers of applicant’s tactical goods might also purchase one of opposer’s high-end watches does not provide a basis for finding that the channels of trade and classes of purchasers overlap. Every consumer is a potential customer for opposer’s watches, but that does not mean that a purchaser of both would think they emanated from the same source. Otherwise, this factor would weigh in opposer’s favor in every Section 2(d) dispute. In sum, the Board found that in view of the “utter lack of any evidence of a relationship between Opposer’s and Applicant’s goods, their channels of trade or the classes of purchasers, these factors weigh heavily against a finding of likely confusion.”

Finally, the Board accepted applicant’s argument that its goods would be purchased with care because they are used to protect people’s lives. This factor slightly favored applicant.

Balancing the relevant du Pont factors, and despite the fame of opposer’s mark, the Board found confusion unlikely.

Nonuse and Abandonment: While the involved applications were pending, applicant filed a motion to delete many of its identified goods, and consented to entry of judgment against it as to those goods. The Board granted the motion. Applicant’s admitted nonuse on some of the goods, the Board observed, was not a ground for deeming the applications void ab initio in their entireties. [citing Grand Canyon Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1697-98 (TTAB 2006)]. Moreover, prior to its filing date, applicant used its marks for pouches for tactical gear, which are substantively the same as the “bags for tactical gear and tactical equipment” of the application, and for armor bearing vests, which are “protective clothing.”

And so opposer’s nonuse and abandonment claims failed.

Fraud: Applicant admitted that it did not use its marks on some of the identified goods prior to filing its use-based applications. However, that did not establish fraud. There was no evidence, let alone the required clear and convincing evidence, that applicant intended to deceive the USPTO. The fact that applicant should have known that it was not using its marks on some of the goods does not, of course, establish fraud.

The Board rejected Opposer’s claim that applicant’s delay in correcting its applications established its deceptive intent. Applicant admitted its error during discovery and it then made its motions to amend. [N.B.: some seven years after filing the applications - ed.]. That did not constitute evidence of an intent to deceive.

And so the Board dismissed opposer’s fraud claim.

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TTABlog note: This case was argued at the ABA-IPL Conference in Bethesda, Maryland, in March of this year.

Text Copyright John L. Welch 2015.


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