TTAB Sustains Section 2(d) Opposition to CRAFT BEARINGS Based on Opposer's Common Law Use of CRAFT BEARING COMPANY

In a 53-page opinion that deserves a close reading, the Board sustained an opposition to the word + design mark shown below, for bearings and structural parts for vehicles, finding a likelihood of confusion with opposer's common law mark CRAFT BEARING COMPANY for bearings and related components for machinery. The Board deemed opposer's mark neither generic nor merely descriptive of its goods, rejected applicant's claim of priority based on use analogous to trademark use, and found that even if opposer's mark were not inherently distinctive, opposer had established acquired distinctiveness. Set out below is a summary of the high points of the decision. Craft Bearing Company, Inc. v. UAB “Craft Bearings”, Opposition No. 91225061 (December 16, 2019) [not precedential] (Opinion by Judge David K. Heasley).

Priority: Applicant was entitled to rely on its filing date (a Section 66(a) extension request) for purposes of priority, but it also claimed use analogous to trademark use for an earlier period of time. It made no sales in US commerce but it contended that it "promoted its products via its website, catalogs, participation in trade shows, and social media accessible to potential purchasers in the U.S., beginning in December 2004." However it had no immediate plans to sell products in this country and its marketing efforts "did not inform prospective purchasers in the U.S. of the present or future availability of its goods." Therefore the Board rejected its claim.

Opposer relied on its use of its mark CRAFT BEARING COMPANY since 1994, but applicant maintained that the mark is generic or merely descriptive. The Board rejected both contentions. The Board agreed with opposer that applicant's argument was "inconsistent," since applicant did not disclaim the word CRAFT in its mark or seek registration under Section 2(f).

Moreover, as to genericness, there was no evidence that the relevant public would perceive the entire term CRAFT BEARING COMPANY as referring to the genus of bearings. As to mere descriptiveness, the Board acknowledged that there is a "fine line" between descriptiveness and suggestiveness, and found that opposer's mark fell on the suggestive side of the line.

The Board next found that, assuming arguendo that's opposer's mark is descriptive, opposer had established acquired distinctiveness based on its use of the mark since 1994, its (rather modest) sales and advertising figures, and the declarations of three third-parties.

[T]he evidence indicates that Opposer has marketed and sold its goods under the CRAFT BEARING COMPANY mark over the course of two decades since 1994, and over that time has succeeded in educating relevant industrial users that it is the source of bearing and related components bearing that mark.

Likelihood of Confusion: The Board marched through the du Pont factors and found the marks more similar than dissimilar, the goods identical or closely related, and the channels of trade and classes of consumers identical in part and overlapping in part.

Although purchaser of the involved goods may require some care, even sophisticated purchasers "could still infer from the parties' highly similar CRAFT BEARING-formative marks that their legally identical or related goods emanate from the same source, of from affiliated sources, such as licensor and licensee."

Applicant's evidence of some 40 third-party registrations failed to show that opposer's mark "is so weak, as used on bearings, that Applicant may register a CRAFT BEARING-formative mark for use on bearing and related goods without engendering source confusion."

Conclusion: The Board found confusion likely and it sustained the opposition.

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TTABlog comment: Hat tip to FOB Matthew Hintz.

Text Copyright John L. Welch 2019.