Friday, September 11, 2015

ASHCON Confusable With ASHCORE AND ASHCOLITE for Ash-Hauling Goods and Services, Says TTAB

The Board sustained an opposition to registration of the mark ASHCON for consulting services concerning bottom ash dewatering systems, finding the mark likely to cause confusion with the registered marks ASHCORE and ASHCOLITE for pipes and fittings for ash hauling systems. The Board deemed applicant's third-party registration evidence to be of little probative value as to the strength of opposer's marks. Diamond Power International, Inc. v. Clyde Bergemann, Inc., Opposition No. 91201996 (September 9, 2015) [not precedential].

Mere descriptiveness: The Board first dismissed opposer's claim that the mark ASHCON is merely descriptive of applicant's services. Although ASH is clearly descriptive of the services, there was no evidence that CON has an established meaning in the industry or that it is a known abbreviation for "conveyor." Nor was there any evidence that ASHCON as a whole is merely descriptive.

Likelihood of confusion: Opposer claimed to own a family of "ash" marks for various ash-conveying equipment, but it failed to show that it "used and promoted together a group of ASH marks." Nor did it show that the ASH component of its several marks was used "in a consistent manner, as a prefix, as a suffix, or in some other uniform way." Mere registration of a number of ASH-formative marks was not enough.

As to the involved goods and services, the parties stipulated that they share common customers. Opposer's various ASH marks are associated by these common customers with a wide variety of complementary goods and services. Applicant's ASHCON consulting services "could be rendered to place Applicant's ASHCON remote dewatering unit as the last part of an ash conveying system that includes Opposer's line of goods bearing the ASH Marks." Thus, according to the Board, applicant's services and opposer's goods are complementary and therefore related for Section 2(d) purposes.

The customers for the respective good and services are likely to be sophisticated, but consumers who are knowledgeable in a particular field are not necessarily knowledgeable about trademarks, nor are they immune to source confusion when related goods and services are involved. So this du Pont factor was deemed neutral.

Turning to the marks, the Board found them to be similar in sound and appearance, since they are single terms that begin with "ash" followed by a hard "c."

Applying a variant of the 9th du Pont factor, which concerns the variety of goods on which a prior mark is used, the Board found that opposer's use of two marks having the same construction as applicant's mark makes it likely that consumers would assume that applicant's services come from, or are sponsored by, Opposer. [Huh? - ed.].

Finally, Applicant contended that the extensive use of ASH-formative marks in the industry weakens opposer's marks and limits their scope of protection. The Board, however, pooh-poohed applicant's evidence due to the lack of proof of actual use the differences in the goods and services. Only three of five third-party registrations involved marks having the same structure as the marks at issue, and there was no evidence that those marks are in use. Three of the marks comprised two words rather than one - ASH KLEEN, ASH*FLUX, and ASH PUMP. [so what? ed.]. The other two marks, ASHSCAN (equipment for measuring ash content in coal) and ASHFLOW (machines for forming metal billets) are registered for different products from those at issue here. In sum, principally in light of the lack of evidence regarding use, the third-party evidence had little probative value.

Balancing the relevant du Pont factors, the Board found confusion likely, and it sustained the opposition on the Section 2(d) ground.

Read comments and post your comment here.

TTABlog comment: I am not going to make any stupid "ash" puns, like "opposer kicked ash." I'll leave that sort of sophomoric nonsense to other bloggers. At least for today. Anyway, this case was argued before the Board on October 3, 2014, at Northeastern School of Law, during the (nearly) annual "TTAB Comes to Boston" symposium. The consensus at the time seemed to be that opposer would win.

Text Copyright John L. Welch 2015.


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