Thursday, December 04, 2008

Despite Applicant's Concession of Most duPont Factors, Including Fame, TTAB Grants 2(d) Summary Judgment Based on Differences in Marks

Despite Applicant's concession of most of the du Pont factors, including the fame of Opposer's BIG O and BIG FOOT marks for vehicle tires, parts and accessories, the Board granted summary judgment to 67 and Latham, LLC, finding confusion unlikely with the applied-for marks A BIG RIG RESORT and DANNY'S A BIG RIG RESORT for "retail store services featuring convenience store items and gasoline." Big O Tires, Inc. v. 67 and Latham, LLC, Oppositions Nos. 91178685 and 91178688 (November 18, 2008) [not precedential].

Applicant contended that the first du Pont factor, the similarity or dissimilarity of the marks, outweighed all other factors. The Board agreed. It catalogued the marks' differences in sound and appearance, but found the "main difference" to be in their connotations:

The word "big" is defined, inter alia, as "large or great in dimensions, bulk, or extent [a big house]; also large or great in quantity, number, or amount [a big fleet]." Merriam-Webster Online Dictionary, 2008. There is nothing in the record to suggest any particular meaning of either of opposer's marks in the context of tires. The only meanings we can attribute to opposer's BIG O mark is a large letter "O" or a big tire (the letter suggesting the tire's shape). The marks BIGFOOT and BIG FOOT connote a large foot, good traction of the tire on the road, or "bigfoot," otherwise known as Sasquatch. On the other hand, the phrase "big rig" has a distinct meaning as a term separate and apart from the two individual words "big" and "rig" that make up the phrase.

Applicant submitted a dictionary definition of "big rig" as a "tractor-trailer truck."

Thus, applicant's marks A BIG RIG RESORT and DANNY’S A BIG RIG RESORT connote a place of relaxation for drivers of "big rigs"; in other words, a truck stop where drivers of tractor-trailer trucks may take a break or purchase convenience items and gasoline. The marks also play on the meaning of the word "resort" as an upscale vacation spot, "a place frequented by people for relaxation or recreation: a ski resort." The juxtaposition of such connotation to an establishment that sells fuel and convenience items to drivers of tractor-trailer trucks creates an irony that is not found in opposer's marks.

As to overall commercial impression, Opposer's marks identify an object, whereas Applicant's marks "suggest leisure, a place for long-haul truck drivers to stop and rest, a 'resort for big rigs.'"

The Board therefore concluded that the marks differ in sound, connotation, appearance, and commercial impression. These dissimilarities are so great as to outweigh the other du Pont factors, and so the Board granted Applicant's motion for summary judgment and dismissed the opposition.

Text Copyright John L. Welch 2008.


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