Monday, December 19, 2005

"ORION" for Golf Clubs and Fishing Rods Likely to Confuse, Says TTAB

After all those years of selling duck-hunting gear, L.L. Bean ran into a duck it couldn't subdue: Mucky Duck. Bean's attempt to register the mark ORION for "fishing rods and reels" was shot down by the TTAB in an affirmance of the PTO's Section 2(d) refusal to register based on confusing similarity to the identical mark registered for golf clubs. In re L.L. Bean, Inc., Serial No. 78238339 (December 5, 2005) [not citable].

Examining Attorney Georgia Ann Carty Ellis contended that ORION is a strong and arbitrary mark for sporting goods, and she relied on 140 third-party registrations covering golf and fishing gear to demonstrate that consumers are "frequently exposed to golfing and fishing products being sold under the same marketing conditions."

Bean argued that the trade channels "cannot overlap," that it uses its house mark along with the ORION mark, and that the customers for these goods are sophisticated and discriminating. It indicated its willingness to amend its application to limit explicitly the channels of trade for its goods to L.L. Bean outlets.

The crucial issue for the Board, of course, was the relatedness of the goods. Since the marks are identical, "the relationship between the goods ... need not be as great or as close as in the situation where the marks are not identical or strikingly similar."

Although acknowledging that there is no per se rule that all "sporting tools" are related, the Board found that the third-party registrations "tend to demonstrate that goods of the type identified in applicant's application and the cited registration can emanate from the same source, and be offered under the same mark." [The Board cited In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) for this proposition, although In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988), would have been a better fit for the theme of this posting.] Curiously, the Board also pointed to two third-party registrations that "suggest similarities in the underlying technologies used in fabricating golf club shafts and fishing rods."

As to trade channels, Bean argued that "it has established its own channels of trade," namely, its own stores, catalogs, and website. Because Bean does not sell products through third-party vendors or general retail outlets, its ORION brand fishing rod "will not appear in the same sporting goods section of any department store with Orion brand golf clubs." The Board pointed out, however, that even if the parties' goods would never be sold in the very same store, "they would still be sold in the same types of retail stores," and consumers of golf clubs would also be prospective customers for Bean's fishing rods and reels.

With regard to the care with which the goods would be purchased, the Board noted that the opposed application is not limited to "expensive" rods and reels, "nor is there any evidence that fishing rods and reels are inherently expensive." Moreover, even if a certain amount of care and deliberation is employed in the purchase of these goods, "when strong, identical marks are applied to related sporting goods ... even somewhat sophisticated consumers would not be immune to source confusion."

L.L. Bean duck decoys

Finally, as to Bean's offer to amend its identification of goods to limit the channels of trade to its own outlets, the Board agreed with the PTO that such an amendment is untimely. In any case, the amendment would not avoid a likelihood of confusion, since there are no trade limitations in the cited registration. In short,

"when consumers who are familiar with ORION golf clubs encounter ORION fishing rods, even in applicant's catalogues and retail outlets, or through its online promotional efforts, they are likely to believe there is some association."

The fact that the L.L. BEAN house mark is displayed prominently with its goods did not help Applicant. First, the applied-for mark does not include the house mark, and second, there still exists a possibility of "reverse confusion" should Bean "as the junior user, enjoy sales of an overwhelming volume of its ORION fishing rods and reels."

The Board therefore affirmed the 2(d) refusal.

TTABlog comment: Just because Bean states that its goods are sold only through its own outlets, does that mean the public is aware of that fact? Moreover, Bean does sell products of other companies (e.g., VICTORINOX brand knives) through its outlets. So might not a consumer believe that Bean was selling ORION brand goods made or licensed by Registrant?

TTABlog note: Earlier this year, the Board found confusion unlikely in Hoist Fitness, involving soccer goals and dumbbells. Discussion here at the TTABlog.

Text Copyright John L. Welch 2005.


At 4:00 AM, Blogger Karen Walter said...

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