Thursday, December 08, 2005

"QUALITY" and "QUALITEE" For Auto Parts Not Confusingly Similar, Says TTAB

The Board unsurprisingly affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark QUALITY for automobile transmissions, but it reversed a Section 2(d) refusal, finding the mark not confusingly similar to the mark QUALITEE registered on the Supplemental Register for various automobile parts. In re Quality Trans Parts Inc., Serial No. 76515615 (November 22, 2005) [not citable].

The Board expended little time or effort in affirming the descriptiveness refusal. Examining Attorney Monique C. Miller relied on a dictionary definition of "quality" as meaning "degree of excellence" and "superiority in kind." The Board saw "no doubt that the word 'quality' would be perceived by purchasers as nothing but a laudatory term as applied to applicant's goods."

Shifting gears to the Section 2(d) refusal, the Board first addressed Applicant's argument that a different standard applies when the cited registration is on the Supplemental Register. Applicant asserted that in such case, the marks must be "substantially similar" to warrant a 2(d) refusal. The Board pointed out that it rejected this very argument in In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). Therefore, the Board undertook "the normal du Pont likelihood of confusion analysis."

The Board found the marks to be identical in sound and connotation, but distinguishable in appearance and overall commercial impression. "Considering the marks in their entireties, and noting the weakness of the cited registered mark, we find that the first du Pont factor weighs in applicant's favor."

Third-party registrations led the Board to conclude that the goods of the parties are related, and therefore the second du Pont supported the refusal. Likewise, since the registration and application did not contain any restrictions on the goods, the third factor supported the PTO.

The fourth factor favored Applicant. The Board found that the goods would be sold to automotive mechanics (both professional and amateur) and professional repair shops. Those purchasers are likely to be somewhat sophisticated (especially regarding Applicant's transmissions, which are presumably fairly expensive).

Finally, the Board noted that the cited registration is on the Supplemental Register, and "it thus may be considered to be a weak, descriptive mark which is entitled to a narrower scope of protection than that which would be afforded a mark which is more distinctive." The presence of the word QUALITY in three third-party registered marks for automotive engine parts further weakened the cited mark.

The Board therefore concluded that confusion is not likely, and it reversed the Section 2(d) refusal.

TTABlog comment: Although the Board pointed out that the same, normal du Pont analysis applies when the cited mark is on the Supplemental Register, in practice did it not apply a more stringent test, requiring just what Applicant said was required: "substantial similarity" between the supplementally-registered mark and the applied-for mark?

Text Copyright John L. Welch 2005.


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