Despite Actual Confusion, Divided TTAB Finds PARTZILLA Not Confusable with REVZILLA for Motorcyle Parts

In an exhaustive (and exhausting) 76-page opinion, a divided Board panel dismissed an opposition to registration of PARTZILLA for retail store services in the field of motorcycle parts and accessories, finding the mark not likely to cause confusion with the registered mark REVZILLA for overlapping online store services. Judge Wellington dissented, finding the evidence of customer confusion and customer enquiry to be persuasive. RevZilla Motorsports, LLC v. Powersports Plus, LLC, Opposition No. 91212858 (June 2, 2017) [not precedential] (Opinion by Judge Bergsman).

Evidentiary Issues: The first 18 pages of the opinion dealt with various evidentiary issues, a few of which are noted here. Opposer belatedly claimed a family of "-ZILLA" marks but, although applicant did not object to that contention, opposer failed to prove the claim.

The Board sustained applicant's objection to the introduction by opposer of the discovery depositions of its own witnesses. Opposer claimed that the depositions contain "multiple party-opponent statements by Applicant's counsel." Counsel for applicant apparently misspoke several times during the deposition and referred to REVZILLA when he mean PARTZILLA and vice versa. The Board found these misstatements to be of little probative value since they were not made in the marketplace and are not indicative of consumer perception.

Opposer objected to the admissibility of three other registrations owned by applicant for the mark PARTZILLA and PZ PARTZILLA & Design for closely related services. The Board overruled the objection, finding the registrations relevant to the strength of the "-ZILLA" suffix in the field of motorcycles.

The services: Both parties sell motorcycle accessories and motorcycle apparel and so the services are in-part identical.

Channels of Trade: With regard to the overlapping services, the Board must presume that they travel in the same channels of trade to the same classes of purchasers.

Strength of Opposer's Mark: The Board found that opposer has enjoyed a high degree of commercial success and that REVZILLA is a distinctive and strong mark. However, the evidence showed that the suffix -ZILLA is strongly suggestive because it "engenders the commercial impression of something large, intense, or special." Therefore "REVZILLA cannot bar the registration of every mark ending in the -zilla suffix used in connection with the online sales of motorcycle parts and accessories."

Purchasing Conditions Consumers who select online retailers for motorcycle accessories and apparel are likely to be enthusiasts who are knowledgeable as to the differences between retailers. The degree of consumer care weighs against a finding of likely confusion.

The Marks: The comment element of the marks at issue is suggestive, if not descriptive, and consumers may distinguish the marks based on the otherwise minor differences in the remainder of the marks. Here, REV and PART are not similar, and therefore the two marks, considered in their entireties, are distinguishable.

Actual Confusion: Several enquiries regarding whether the parties are related did not evidence confusion. There were two instances of actual confusion. However, because opposer chose to use the weak formative -ZILLA, competitors are allowed to come closer than would be the case with a strong mark. "Opposer assumed the risk that competitors may use the -zilla suffix." Nonetheless the instances of actual confusion favor a finding of likely confusion.

Market Interface: Because applicant owns two registrations for the mark PZ PARTZILLA & Design for closely related services, the interface between owners and users of the marks will not change significantly if the opposer mark is denied registration. [What does registration have to do with use anyway? - ed.]. These factors weigh against a finding of likelihood of confusion.

Conclusion: Because of the dissimilarity of the marks, the panel majority found confusion unlikely, and  it dismissed the opposition.

Dissent: In a brief dissent, Judge Wellington found the evidence regarding actual confusion and consumer enquiry confusion to be more persuasive than the differences in the marks. This evidence "directly rebuts any inference that consumers are so conditioned to overlook any similarity between the marks based on the common element ZILLA being suggestively or commercially weak."

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TTABlog comment: This is another opinion by Judge Bergsman that is worth reading for its thorough discussion of the factual and legal issues involved in a likelihood of confusion determination.

Text Copyright John L. Welch 2017.