TTAB Dismisses STRATIO Opposition After Narrowing both the Opposed Application and the Pleaded Registration

A fancy bit of footwork by Applicant Stratio Automotive yielded a registration for the mark STRATIO & Design for diagnostic apparatus and diagnostic services for land vehicles. Opposer Stratio Big Data claimed a likelihood of confusion with its registered mark STRATIO for computer software for collecting and analyzing data. Although the Board found confusion likely vis-a-vis applicant's original goods and services, it granted applicant's motion to amend both the application and opposer's registration to avoid confusion, and then dismissed the opposition. Stratio Big Data, Inc. v. Stratio Automotive Inc., Opposition No. 91244363 (October 24, 2023) [not precedential] (Opinion by Judge Michael B. Adlin).

The Board found opposer's mark STRATIO to be entitled to "the typical scope of protection accorded inherently distinctive marks that have not been shown to be commercially strong," [Not sure what that means. - ed.], and the marks "obviously quite similar in appearance, sound, connotation and commercial impression.”

Applicant provided evidence that purchasing decisions by its customers typically take between 6 months and 1 year and often involve dozens of interactions. Opposer’s software and data services "are exclusively or at least primarily targeted to businesses, and would be expected to be used in connection with important business assets. Technical or business skills or knowledge may very well be required to understand and use Opposer’s goods and services." Therefore, this DuPont factor weighed against a finding of likelihood of confusion.

As to the goods and services as originally defined, the Board found opposer’s “computer software for the collection, editing, organizing, modifying, analyzing and generation of reports of data and information" to be broad enough to encompass applicant’s "downloadable software for measuring, detecting and monitoring of automotive performance." Applicant’s services included "information and consultancy," which could encompass data regarding auto vehicle repair, and thus could be related to or overlapping with opposer's "data mining.”

The Board then considered applicant's motion to amend its identification of goods to "diagnostic apparatus for testing automobiles; sensors and detectors for measuring, detecting and monitoring automotive land vehicles performance namely of oil pressure sensor, oil temperature sensor, coolant temperature sensor or engine RPM sensors," and its recitation of services to consultancy and information regarding automobile maintenance and repair. The Board granted the motion because "[i]t not only narrows Applicant’s goods and services but does so in a way as to avoid confusion between the parties’ Class 9 goods."

As indicated, it deletes the “downloadable software for measuring, detecting and monitoring of automotive performance” which we found to be confusingly similar to Opposer’s Class 9 computer software for the collection, editing, organizing, modifying, analyzing and generation of reports of data and information.

With regard to applicant’s services, the Board granted applicant’s Section 18 counterclaim to restrict opposer's recited services by adding the language, "none of the foregoing in connection with the repair, diagnosis or maintenance of vehicles."

Specifically, if the limitation is added, Applicant’s “information and consultancy services,” all of which are “relating to vehicle repair,” would no longer potentially overlap with Opposer’s identified “data mining” services, because Opposer’s data mining services would no longer potentially be “in connection with the repair . . . of vehicles.” Similarly, the trade channels and classes of consumers would no longer potentially overlap, because Applicant intends to offer its information services in only the vehicle repair trade channel, to consumers seeking vehicle repair related services. By contrast, Opposer’s services would be limited to trade channels other than those for vehicle repair, and would be offered to consumers who are not seeking vehicle repair related services.

The Board dismissed the opposition, entering judgment against applicant as to its deleted goods.

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TTABlogger comment: Hat tip to FOBs Lauren Emerson and Lori Cooper of Leason Ellis LLP. Section 18 restriction is seldom invoked and rarely granted.

Text Copyright John L. Welch 2023.