Tuesday, June 14, 2016

TTAB Dismisses 2(d) and Dilution Claims in Opposition to "GARO & Design" for Cigars

The Board dismissed this opposition to registration of the mark GARO & Design (shown immediately below) for  "cigars," finding it not likely to cause confusion with Opposer's registered marks that include a fleur de lis design, also for cigars (see the three marks next below). The Board also dismissed Opposer's dilution-by-blurring claim, finding that Opposer's fleur de lis mark had not obtained fame and further that the involved marks are too dissimilar to support the claim. Altadis U.S.A. Inc. v. Garo Bouldoukian, Opposition No. 91218161 (June 9, 2016) [not precedential].

Standing: Opposer is the parent company of a wholly-owned subsidiary who owns the marks, and opposer uses the marks in direct competition with applicant. Opposer's use "inures to the benefit of Opposer," and therefore Opposer has standing. [Quality control? See the recent parent/subsidiary case in which the parent's use of the mark did not inure to the benefit of the owner/subsidiary (here) because of the lack of quality control - ed.].

Goods, Channels of Trade, Classes of Customers: Since the involved goods are identical, the Board must presume that they travel in the same, normal channels of trade to the same classes of consumers.

Fame: Opposer failed to establish fame for any marks other than its MONTECRISTO-formative word marks. It did not establish fame for its fleur de lis design.

Marks: The Board found the dominant portion of applicant's mark to be the word GARO and the silhouette design. The fleur de lis pattern appears as "wallpaper - an incidental design, which, if it is discerned at all, is nothing more than background to the more source-identifying dominant components of Applicant's mark." The marks are "very dissimilar" in appearance, there is "no overall similarity" in sound, and the connotation of the marks is also dissimilar. Moreover, the marks create wholly different commercial impressions.

Oberving that a single du Pont factor may be dispositive, the Board found that opposer had failed to prove a likelihood of confusion, and therefore it dismissed opposer's Section 2(d) claim.

Dilution:  Since opposer could not establish fame for purposes of Secgtion 2(d), it perforce could not meet the higher fame standard applicable to a dilution claim.

Moreover, even assuming arguendo that opposer's fleur de lis mark was famous, the involved marks are "profoundly dissimilar."

And so the Board dismissed the dilution claim.

Read comments and post your comment here.

TTABlog comment: Do you think this was a WYHO?

BTW, the Board, relying on a 2005 decision, said that the marks must be "identical or very substantially similar" for purposes of a dilution-by-blurring claim, but that is not the correct standard. In the COACH case in 2010 (pdf here), the Board ruled that "For purposes of determining the degree of similarity between applicant’s mark and the famous mark in the dilution analysis, we will use the same test as for determining the similarity or dissimilarity of the marks in the likelihood of confusion analysis." That is the test that the TTAB has been applying ever since. It didn't make any difference here, since the marks were not similar enough anyway.

Text Copyright John L. Welch 2016.


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