TTABlog Test: Is DAILY FILL Confusable with DAILY'S For Gas Station Convenience Store Services?

First Coast Energy opposed an application to register the mark DAILY FILL for "retail store services featuring convenience store items and gasoline," claiming a likelihood of confusion with the registered mark DAILY'S for the same services. The parties opted for ACR and stipulated to a many things, leaving one critical issue to be resolved: the similarity of the marks. How do you think this came out? First Coast Energy, L.L.P. v. Dhukani Holdings, LLC, Opposition No. 91231925 (March 8, 2019) [not precedential] (Opinion by Judge Susan J. Hightower).

Since the services are identical, the Board must presume that they travel in the same channels of trade to the same classes of consumers. The transactions involved in the parties' services are "commonplace and relatively inexpensive," and are often prompted by impulse or immediate need.

Strength of Opposer's Mark: The evidence indicated that opposer's mark has some consumer recognition, at least in Florida, where the mark has been in use for more than 15 years. Its annual gross revenues at its 37 stores, all in Florida, amounted to  $369 Million. Customers transact business with opposer 73,000 times per day. It spends about $1.1 Million annually for marketing, primarily targeted at the Jacksonville market.

The mark DAILY'S, registered without a 2(f) claim, is presumed to be inherently distinctive. Applicant pointed to three third-party registrations for marks incorporating the word DAILY for convenience store services, but provided no evidence as to use of those marks. According to the Board, these registrations are probative but insufficient to affect the strength of opposer's mark.

The Board therefore accorded to opposer's mark "the normal scope of protection afforded to inherently distinctive marks."

Similarity of the Marks: Applicant argued that the marks engender different commercial impressions: "DAILY FILL is a common expression for a quantity that satiates for a 24-hour period. DAILY'S is a possessive that implies a business owned or operated by a person named Daily."

The Board acknowledged that use of the possessive in opposer's mark may contribute to the perception that it is a surname, but "marks may not be meaningfully distinguished by the use of the same term in possessive form." [E.g., BINION and BINION'S ROADHOUSE; WIN-WAY DOLLAR STORE and WINN'S].

The Board noted that there was no evidence that anyone associated with opposer has the surname "Daily," and the dictionary definition of the term did not refer to it as a surname. The Board's analysis "must take into account the fact that 'daily' also is a common word that is suggestive in association with the identified services and could be perceived as conveying this meaning even in possessive form."

Moreover, there was no evidence that DAILY FILL is a common expression. The leading word DAILY is in the "position of prominence" and is likely to be noticed and remembered by consumers and so to play a dominant role in the mark.

The fact that opposer's mark "is essentially subsumed" in applicant's mark increases the overall similarity of the marks.

For all these reasons, we find that consumers of retail store services featuring convenience store items and gasoline, who are likely to shop on impulse and retain only a general impression of marks, would be likely to assume a connection between the parties due to the similarity of the marks DAILY’S and DAILY FILL, considered in their entireties. The first du Pont factor also supports a finding that confusion is likely.

Conclusion: The Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: I think DAILY FILL is a unitary term, and DAILY does not dominate. What do you think?

Text Copyright John L. Welch 2019.