Friday, April 06, 2007

Precedential No. 27: Board Finds Family of "HOG" Marks, Sustains 2(d) Opposition to "DIRT HAWG" and "WATER HAWG" for Wet and Dry Vacuums

The Board's recognition of a "family of marks" is about as rare as a fish in a tree, but in Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482 (TTAB 2007) [precedential], it ruled that Opposer B&D had established a family of "HOG" marks for power-operated outdoor equipment. The Board proceeded to find likely confusion with the applied-for marks DIRT HAWG and WATER HOG for "vacuum cleaners, wet and dry vacuum cleaners, and replacement parts therefor."

The Board first gave B&D a smackdown by denying its motion for leave to amend the notices of opposition to add a claim that Applicant Emerson did not have a bona fide intention to use the applied-for marks at the time of filing. The motion was filed after the close of the testimony period, and the Board found that B&D had unduly delayed in filing its motion.

Turning to the du Pont analysis, the Board rooted its way through the record evidence, beginning with B&D's family-of-marks claim. It noted that B&D advertises "Hog Powered Products" and utilizes store banners with slogans such as GOING HOG WILD, HOG POWER, and HOG POWERED PRODUCTS. The different HOG products -- GRASS HOG, LAWN HOG, HEDGE HOG, EDGE HOG, LEAF HOG -- are placed together in stores, and some of Opposer's advertisements in fact "tell consumers that opposer has a HOG family of marks."

"[O]pposer has created a family of marks consisting of the word HOG, preceded by a word that indicates or suggests the use of the product for which it is used, such that consumers will view the marks following this pattern as having a common origin."

The Board observed that DIRT HAWG and WATER HAWG have "the same pattern as is used by opposer's family of marks. Moreover, the words may be pronounced the same way, and have the same connotation and commercial impression. The spelling difference is not sufficient to distinguish the marks.

Applicant Emerson contended that the goods are specifically different, since B&D does not sell wet/dry vacuums. The Board noted, however, that B&D does sell those products, although not under a HOG mark, and that wet/dry vacuum cleaners "may generally be categorized as lawn and garden products": for example, they "can be used to clean sidewalks, decks and patios." The parties' goods "may be stored in a garage" and may be used "by the same do-it-yourself consumers for maintenance and clean-up." When seeing Emerson's products, consumers are likely to believe "that opposer has expanded its line of HOG products."

As to trade channels, the products may be sold not only in large home centers, but also in smaller hardware stores, including mom-and-pop stores. And even if they are in separate departments in larger stores, "a consumer may encounter both types of products during a visit to a particular store, regardless of their location with the stores." [TTABlog comment: The Board went a little too far with the "large store" store point. Lots of diverse products may be encountered by a consumer in a home center, including products wholly unrelated to wet/dry vacs and leaf blowers: e.g., paint and cleaning supplies.] Thus the channels-of-trade factor favored B&D.

As to purchaser sophistication, the Board found that the purchase of these products "is not likely to engender a great deal of deliberation." The products are relatively inexpensive [TTABlog comment: relative to what? and for whom?]: for example, Applicant's two gallon vacuum sells for about $20, while Opposer's are in the $50 to $250 range.

B&D claimed that its HOG marks are famous, but the Board did not agree. [B&D's sales and advertising figures were submitted as confidential]. At most, they are "strong."

Emerson pointed to various third-party registrations -- BUSH HOG, FLOOR HOG, RAZOR-BACK HOG, HOG WASH, SAND HOG, MUD HOG, GROUND HOG, SKID HAWG -- but the Board found them of no particular significance. They either had a "different pattern" than B&D's HOG marks, or covered vastly different goods, or were too minimal in number to show that HOG is a suggestive term for the goods at issue.

Emerson also pointed to third-party use of HOG marks, but its feeble evidence "does not outweigh the significant amount of sales of opposer's products and the expenditures by opposer in advertising and promoting its HOG family of marks."

The lack of actual confusion was a neutral factor, the Board noting that Emerson's WATER HOG mark has not been put into use, and that DIRT HAWK sales have been very limited.

Finally, the Board noted that Emerson was aware of B&D's prior use of the HOG marks, but it refused to find that Emerson had adopted the HAWG marks in bad faith. The Board found credible Emerson's assertion that it chose the word HAWG because of the association of that word with the University of Arkansas.

Considering all the relevant du Pont factors, the Board found confusion likely and sustained the oppositions.

Text Copyright John L. Welch 2007.


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