TTAB Test: Are "DASH NEIGHBORHOOD" and "DASH IN" Confusable for Convenience/Gasoline Stores?
The USPTO refused registration of the mark DASH NEIGHBORHOOD for "retail store services featuring gasoline," finding the mark likely to cause confusion with the registered mark DASH IN for "retail store services featuring convenience store items and gasoline." Applicant appealed, arguing that the term "DASH" is weak and "commonly associated with convenience stores." How do you think this came out? In re SDI Petroleum, LLC, Serial No. 86011946 (November 30, 2015) [not precedential].
Disclaimer requirement: The PTO also refused registration on the ground that Applicant refused to disclaim the term NEIGHBORHOOD. Relying on a dictionary definition and website pages, the Examining Attorney argued that NEIGHBORHOOD identifies a feature or characteristic of Applicant's services - i.e., the services are offered to the surrounding "neighborhood." Applicant pointed to several registered marks that contain the word NEIGHBORHOOD without disclaimer, but they were not for the same services as involved here, and the Board concluded that they do not evidence an Office policy or practice. Most importantly, the Board is not privy to the records in those cases, and in any event each case must be decided on its own merits.
The Board had no doubt that NEIGHBORHOOD is merely descriptive of applicant's services, and it affirmed the disclaimer requirement.
Likelihood of Confusion: Applicant's services are in-part identical, and thus legally identical, to the services of the cited registration. The Board must therefore presume that the channels of trade and classes of consumers are the same. Of course, when the services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.
Applicant submitted the declaration of a linguistic expert, who opined that the second syllable in each mark is dominant, that the term "dash" is typically accompanied by a preposition of direction, and that applicant is using the word "in a novel non-canonical, coined verb form." The Board, however, did not agree that consumers would not understand the mark "to indicate a dash into or around the neighborhood." Therefore, the commercial impressions of the two marks are similar.
Applicant further contended that DASH is weak and is "commonly associated with convenience stores," so that consumers will note the differences between the marks at issue. It submitted at least 17 examples of uses of DASH in connection with convenience store services around the country, relying on yellow pages information from the Internet. Applicant's counsel also made telephone calls to confirm that these businesses were in existence and were offering gasoline and convenience store services.
The Board, citing Juice Generation and Jack Wolfskin, agreed with applicant that consumers are "accustomed to encountering the term 'DASH' in relation to convenience store services and retail gasoline services." Moreover, some of the uses were "quite similar" to the DASH IN mark.The Board concluded that the shared term "DASH" is "so weak that consumers will look to distinguishing features of the mark."
The Board therefore reversed the Section 2(d) refusal.
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TTABlog comment: Small businesses like convenience stores and gas stations are ubiquitous, and therefore a fertile field for proof of third-party use. Find enough of them, cite the CAFC cases, and you can overcome the old saw that third-party uses are not probative without proof of the nature and extent of the use.
Text Copyright John L. Welch 2015.