Precedential No. 11: Despite Court Non-Infringement Ruling, TTAB Affirms 2(d) Refusal of MOAB for Automobiles and Parts

The Board affirmed a Section 2(d) refusal to register the mark MOAB for "Motor vehicles, namely, passenger automobiles, their structural parts, trim and badges'" finding it likely to cause confusion with the registered mark MOAB INDUSTRIES for "Automotive conversion services, namely, installing specialty automotive equipment" [INDUSTRIES disclaimed]. While the subject application was pending (and suspended), the federal court in Arizona ruled in favor of Applicant FKA US LLC (f/k/a Chrysler Group LLC) in a trademark infringement and unfair competition action brought by the cited registrant, but the Board found that the court rulings had no estoppel effect on the Board's determination of this ex parte appeal. In re FCA US LLC, 126 USPQ2d 1214 (TTAB 2018) [precedential] (Opinion by Judge Anthony R. Masiello). [Affirmed by the CAFC under Fed. Cir. R. 36., October 2, 2019].

Estoppel: At the district court, registrant failed to prove that Applicant’s use of the mark MOAB in connection with its "JEEP WRANGLER MOAB Special Edition" vehicles “was likely to cause confusion on the part of reasonably prudent customers for [Registrant’s] upfitted vehicles."

The district court was aware of the pending trademark application and of the USPTO's refusal to register, but observed that "[T]he USPTO finding of potential confusion is entitled to very little weight inasmuch as the USPTO would not have had access to most of the evidence which is before the court.”

Applicant here argued that “The Board … should defer to the more fulsome record upon which the District Court relied to draw its conclusions, and the District Court’s careful consideration of likelihood-of-confusion factors …” The Board, however, observed that "[although there is some overlap between Applicant’s defense and counterclaims in the federal court action and the basis of refusal of Applicant’s application, they also raise discrete issues. In other words, the issues are not identical." In the lawsuit, applicant secured a finding that "specific alleged marketplace activities did not infringe Registrant’s rights in the mark MOAB INDUSTRIES." However, in the registration context, "likelihood of confusion is determined by the marks,  the goods and services, and the usages disclosed in the application and the cited registration. Evidence of actual marketplace usages that seeks to limit or alter the usages encompassed by the marks, goods and services, or usages listed in the application and registration are not considered in assessing likelihood-of-confusion in the registration context."

Applicant FCA seeks to register MOAB alone, whereas the courts considered use of the mark MOAB together with the terms JEEP and WRANGLER. The court did not consider automobiles in general, but rather only “expensive” “highway-legal, off-road enhanced performance vehicle[s]” that are “upfitted … to enhance their off-road capabilities” and are “intended for off-highway use under difficult to extreme circumstances.” And applicant also seeks registration for “structural parts, trim and badges” of passenger automobiles," goods that were not considered in the lawsuit.

FCA requested that the Board apply issue preclusion in the present appeal, but the court pointed out that the USPTO was not a party to the lawsuit. "The Federal Circuit has long held that a determination in district court litigation does not bind the USPTO in a later ex parte proceeding."

In sum, at least some of the issues raised in this appeal are different from those raised in the lawsuit and require different analyses that could result in different determinations. "As the Supreme Court said of the trademark registration process as compared to infringement litigation, 'it is a separate proceeding to decide separate rights.'"

Section 2(d): The Board found that customers may expect automotive structural parts to emanate from the same source as automotive conversion services. Furthermore, customers would expect that sellers of new automobiles would provide installation of specialty automotive equipment. And the evidence showed that OEM structural parts, like those of applicant, may be obtained through an independent installer like registrant. Therefore, this relationship between the goods and service favors a finding of likely confusion.

As to trade channels, there may be little overlap between applicant's finished automobiles and registrant's upfitted autos, but registrant's service "is, itself, a trade channel for automotive structural parts, and so this weighs in favor of a finding of likely confusion.

With regard to the conditions of sale, registrant's customers would be careful and sophisticated automotive enthusiasts but applicant's automobile customers would include ordinary drivers with no particular automotive sophistication. Those customers would exercise care in purchasing automobiles, with particular attention to the source of the goods, but as to parts or trim they would employ less care. Thus the facts relevant to this factor are mixed.

Turning to the marks, the Board not surprisingly found them similar in commercial impression. The term MOAB (a geographic location in Utah known for its off-road trails) may have some suggestiveness vis-a-vis applicant's vehicles and registrant's services, but the impact of this fact on the likelihood of confusion is "minor."

Expert testimony offered by applicant in the lawsuit, on the issue of actual confusion, was given little weight by the Board since the expert did not test the impact of the mark MOAB that applicant seeks to register, he limited the universe of respondents to individuals considering the purchase of off-road vehicles, and he employed an unfair survey test for confusion.

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal to register under Section 2(d).

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TTABlog comment: It would be good to see the Board draw the same lines between civil actions and inter partes Board proceedings.

Text Copyright John L. Welch 2018.