Tuesday, September 15, 2009

Finding Autos and Tires Not Closely Related, TTAB Reverses 2(d) Refusal of "ECHELON"

In this rather strange case, both Applicant Hyundai and the Trademark Examining Attorney urged the Board to reverse a Section 2(d) refusal of the mark ECHELON for automobiles that was based on the identical mark registered for "automotive tires." The Examining Attorney had considered himself bound by In re Jeep Corporation, 223 USPQ 333 (TTAB 1984), and along with Hyundai argued that Jeep should be overturned. The Board, however, distinguished Jeep on its facts, finding no per se rule in Jeep that needed overturning. In re Hyundai Motor America, Serial No. 78889340 (September 14, 2009) [not precedential].

The Examining Attorney maintained his final refusal based on Jeep, but he also submitted website evidence supporting Applicant's position. At the oral hearing, both he and Applicant Hyundai argued for reversal of the refusal.

The Board rejected the notion that Jeep creates a per se rule that automobiles and tires are always related goods. Instead, the Board pointed out that it must look at the record evidence "to determine whether these goods are related as closely under trademark law as tires are when securely mounted on auto wheels." [That's pretty darn close - ed.] It found that they are not.

[M]erely because two products are attached or used together does not necessarily mean they are closely related. Consumers do not purchase an automobile without tires, and then later go looking for tires. Nothing in this record points to a single source for automobiles and tires. Accordingly, there is no reason to presume such a perception on the part of consumers of automobiles. We find nothing in the record to support a conclusion that automobiles and their tires are “closely related,” as that term is used in the jurisprudence developed around likelihood of confusion.

The evidence showed "the virtual separation of these channels of trade." Moreover, even unsophisticated tire buyers "would not be able to purchase tires without the assistance of expert, trained store personnel." "[A] capable sales person would not agree to sell and mount tires that do not fit the auto's wheels."

Moreover, Hyundai provided "real-world, online" examples to show that "some of the largest auto manufacturers and the most well-known tire manufacturers readily permit the same mark to coexist for automobiles and automobile tires." The existence of numerous third-party registrations for similar marks owned by different entities for tires and automobiles was consistent with the conclusion that owners in these industries do not believe that there is a likelihood of confusion.

Hyundai also pointed to current tire industry practice by which the source of a tire is listed on the sidewall, further reducing the likelihood of confusion.

The Board therefore found that autos and automobile tires "are not closely related goods given the current marketing conditions for the replacement tire industry and the totally disparate channels of trade between tires and automobiles."

With the possible exception of automobile marks of demonstrated renown - a fact pattern not shown to be the case herein - the chances for likelihood of confusion in the real world are de minimis under these circumstances.

Finally, the Board noted that "[w]hen it comes to likelihood of confusion, trademark practitioners and jurists know that there are no per se rules as to the relatedness of goods."

Therefore, contrary to the positions of both applicant and the Trademark Examining Attorney, we cannot discern a rule of law from In re Jeep Corp. in need of being overturned. Furthermore, although the briefing and oral arguments urge us to do so, we do not find it necessary to take a position herein on whether precedential cases decided decades ago were then supported by the realities of the marketplace or their respective factual records.

Judge Zervas concurred in a separate opinion, opining that the refusal should be reversed, but not for the reasons stated by the panel majority. He would reverse on the ground that the Examining Attorney did not make out a prima facie case.

Judge Zervas pointed to Section 1207.01 of the TMEP, which requires the Examining Attorney to provide evidence "showing that the goods and services are related to support a finding of likelihood of confusion." Since the Examining Attorney did not provide such evidence, the mark should not have been refused registration.

TTABlog comment: I agree with the concurrence. How does an Examining Attorney or a USPTO law office have the authority to decide that he, she, or it will side with an applicant to try to get the TTAB to overturn a Board precedent?

Text Copyright John L. Welch 2009.


At 1:17 AM, Anonymous Josh said...

I find this situation bizarre. Surely this practice of "siding" with the applicant isn't common. Are there any Examining Attorneys (or former EAs) that would care to comment? Will the ECHELON Examining Attorney be reprimanded in some way?

At 10:22 AM, Anonymous Anonymous said...

The concurring opinion is succinct and correct -- the Examiner did not meet the burden of proof.

At 11:24 AM, Anonymous Anonymous said...

As a former EA, I've never heard of this situation before. But Managing Attorneys sign off on the appeals, so it had the law office's blessing (the Senior Attorney is typically involved as well).

There is (or at least was in Fall 2007) a form paragraph that reads "The Trademark Trial and Appeal Board has consistently found that the use of identical or similar marks on automobiles and on tires is likely to cause confusion. In re Jeep Corp., 222 USPQ 333 (TTAB 1984) (LAREDO for land vehicles and structural parts therefor confusingly similar to LAREDO for pneumatic tires) [string cites omitted]"

Based on the form paragraph, if the EA did not make the cite, it would likely be considered a clear error by either the law office manager or the quality control team if this file got pulled for review. The EA had to make the cite to save his own skin.

At 2:41 PM, Anonymous JLHDEA said...

I agree with both Anonymouses (sp?). Cleary the EA didn't meet burden of proof, so, on the one hand, why on Earth would he go final and take it to the Board? On the other hand, the marks were identical and Office policy (i.e. precedent, TMEP, form paragraphs, etc) pushed him to refuse despite the evidence.
As to a reprimand of some form, I think in this particular case he may have been told/encouraged to take this approach. I hardly believe an Examiner would take such a bold, unprecedented approach to oral argument without the blessing of the office. This seems somewhat akin to the Steelbuilding reversal (http://thettablog.blogspot.com/2008/12/irked-ttab-reverses-ptos-stubborn.html) where the PTO refused again despite CAFC and TTAB decisions. The manager there took a unique approach and appended an argument to the examiner's brief. Seems here the office wanted clarification on the law and took the unique approach they did to force the board's hand.

At 7:41 AM, Anonymous Anonymous said...

@Josh: Tho rare, this kind of examiner-applicant agreement is not unheard of, in cases where the case law would be better clarified for everyone. I seem to remember a similar (but somewhat more discreet) situation years ago, trying to do away with a bizarre descriptiveness issue: http://www.uspto.gov/web/offices/com/sol/foia/ttab/2eissues/2003/75599525.pdf


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