Friday, April 16, 2010

Real World Aside, TTAB Affirms 2(d) Refusal of "CARRERA" for Welding Helmets

In a decision noteworthy for its display of photoshopping talent, if nothing else, the Board affirmed a Section 2(d) refusal to register the mark CARRERA for "welding helmets," finding the mark likely to cause confusion with the identical mark, registered for "protective helmets." Applicant made the futile argument that the registrant sells only cycling helmets under its mark, but the Board pointed out for the millionth time that the determination of likelihood of confusion must be made in light of the goods identified in the cited registration, not on what the Registrant actually sells in the real world. In re A.C.E. International Company, Inc., Serial No. 77481947 (March 16, 2010) [not precedential].

Of course, the fact that the marks are identical weighed "heavily" in favor of a finding of likely confusion. Moreover, when the marks are identical, a lesser degree of similarity between the goods is necessary to support such a finding.

Applicant urged that Registrant is recognized for its cycling helmets. It pointed to the file history of the cited registration, where "protective helmets" were originally identified as "protective helmets for skiing and bicycling," and to Registrant's website.

Having presented this evidence, applicant decries the unfairness of this refusal to register inasmuch as Safilo’s “protective helmets” clearly do not include welding helmets, and applicant does not sell protective helmets for sports-related activities.

However, the Board pointed out that it would be improper to restrict or modify the Registrant's identification of goods based upon extrinsic evidence. The Board "must presume that registrant's 'protective helmets' might well include welding helmets."

The evidence showed that in common parlance the term "protective helmet" is used "interchangeably with welding helmet." In fact, in an earlier registration, Applicant referred to "protective or safety helmets." The website of a German [? - ed.] manufacturer offered motorcycle and welding helmets. And third-party registrations showed the same mark registered for sports-related activities and welding helmets.

Finally, Applicant argued that the purchasers of the involved goods are expensive and their purchasers are sophisticated. The Board observed that, in reality, the goods are obviously different, but the issue is not confusion as to the goods but confusion as to source. Applicant failed to provide evidence that purchasers of Registrant's good exercise great care, and even if there were such evidence, that would not necessarily mean that confusion would not be likely under the instant circumstances.

As to Applicant's argument about Registrant's amendment of its identification of goods, the Board suggested that the remedy may lie in Section 18 of the Trademark Act, whereby the registration might be restricted to sports-related helmets.

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2010.


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