TTABlog Test: Is MOSSY OAK Confusable with ROYAL OAK for Watches?

Swiss watchmaker Audemars Piquet opposed applications to register MOSSY OAK and MOSSY OAK & Design for watches and jewelry on the grounds of likely confusion with and likely dilution of the registered mark ROYAL OAK, in standard character and stylized form, for watches. The Board dismissed the dilution claim because Piquet failed to show the requisite fame among the general consuming public. But what about likelihood of confusion? How do you think this came out? Audemars Piquet Holding S.A. v. Haas Outdoors, Inc., Consolidated Oppositions Nos. 91242213 and 91242238. July 14, 2023 [not precedential] (Opinion by Judge Thomas W. Wellington).

Because the involved goods are in-part identical and there are no restrictions in the opposed applications or pleaded registrations, the Board must presume that these goods travel in the same trade channels to the same classes of consumers. These factors weighed "strongly" in favor of Opposer Piquet.

The Board found ROYAL OAK to be a conceptually strong mark, even though "royal" has a somewhat suggestive connotation. As to commercial strength, Piquet maintained that its ROYAL OAK mark is "famous in the United States due to [its] long history of use, significant sales success, extensive advertising and promotion, numerous well-known spokespeople and endorsers, sponsorship of major public events, and frequent mentions in the media." Its experts testified that the mark not only has niche fame in the luxury watch market, but is well-known among "consumers who may not be able to afford the watch." [The "starting price" for a ROYAL OAK watch is $20,000].

The Board found particularly probative the extensive media attention that indicated that "ROYAL OAK watches are regarded by collectors and aficionados as the 'world’s first luxury steel sports watch' or as one of a few 'truly classic watches' amongst other luxury brands," leading to the conclusion that "ROYAL OAK is an extremely well-known mark in connection with luxury watches." However, the Board also found, despite the expert testimony, that the prominence of the mark does not extend to the general public: "Amongst the general purchasing public for watches, the ROYAL OAK mark is not an especially strong or weak mark, but deserves a normal scope of protection."

Turning to the marks, the Board observed once again that when the involved goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board noted the obvious similarities and differences in the involved marks, concluding that "because Opposer’s marks are strong and the goods are identical, consumers may perceive Applicant’s marks as designating a product line extension of Opposer’s watches."

The Board agreed with the applicant that Piquet had failed to prove any actual confusion, but the Board noted that there has been little opportunity for confusion, since the applicant's sales were "intermittent and insignificant."

Since the opposed applications and pleaded registrations include watches in all price ranges, the Board brushed aside the applicant's "sophisticated purchaser argument," finding that factor to be neutral. The Board also handily rejected the applicant's arguments under the ninth, tenth, eleventh, and twelfth DuPont factors.

Balancing the relevant DuPont factors, the Board found confusion likely, and it sustained Opposer Piquet's Section 2(d) claim.

Read comments and post your comment here.

TTABlogger comment: The Board's "product line extension" rationale seems to accord the opposer the benefit of the "family of marks" doctrine without opposer having to meet the stringent requirements for proving a family of marks.

Text Copyright John L. Welch 2023.