Monday, May 09, 2011

Precedential No. 11: TTAB Limits Madrid Opposition to Goods Listed on ESTTA Form, But Opposer Wins Anyway

After an initial procedural skirmish concerning how to oppose a Section 66(a) Madrid Protocol request for extension of protection, the Board sustained the opposition to the mark SENSE AND SIMPLICITY for "electrical light dimmers, electrical circuit boards, printed circuit boards, electrical circuits for electrical conduction, printed circuits, electrical and controllers," in light of the mark SIMPLICITY for "electrical light dimmers and lighting control panels." Hunt Control Systems, Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558 (TTAB 2011) [precedential]. [NB: The Board's decision on likelihood of confusion was reversed by the U.S. District Court for the District of New Jersey in August 2017 (Civil Action No. 11-3684)].

Madrid oppositions: An opposition to a "Madrid application" must be filed via ESTTA, and the notice of opposition may not be amended to add new grounds. See Trademark Rules 2.101(b)(2) and 2.107(b). These rules facilitate the prompt notification to WIPO that an opposition has been filed. ESTTA generates an opposition form that is automatically forwarded to WIPO.

Here, on the ESTTA electronic form Opposer Hunt listed six items in Applicant's class 9 list of goods, but argued that the scope of the opposition was broader because "in the supplementary explanation of the basis for the opposition that was attached to the ESTTA opposition form, opposer specifically recites the same six goods and adds to such recitation 'and related products in International Class 9' as constituting the objectionable goods."

The Board ruled that, for Madrid oppositions, the opposed goods must be limited to those identified on the ESTTA form, because that is the information transmitted to WIPO. Otherwise, the USPTO would not be in compliance with its obligations to WIPO.

On the other hand, the Board okayed Opposer Hunt's reliance on its common law rights for "electric light dimmers, lighting control panels and their related components." Applicant objected to the "related components" language as too indefinite, but the Board disagreed.

Finally, the Board ruled that Hunt could not rely on a federal registration for its mark because it was not the named owner of the registration. The registration is owned by a holding company for Opposer Hunt, a separate legal entity.

Likelihood of confusion: Applicant conceded that Hunt has prior common law rights in the SIMPLICITY mark. The Board found the involved goods to be, in part, legally identical, and therefore that they presumably travel through the same trade channels to the same classes of purchasers. As to the sophistication of purchasers, the goods include items purchased by individual homeowners at the retail store level, and those purchasers will exercise only an ordinary amount of care.

Turning to the marks, the Board found that [t]he obvious similarity in appearance and sound between the parties' marks stems from the fact that applicant's proposed mark, SENSE AND SIMPLICITY, incorporates opposer's previously used and registered mark SIMPLICITY, in its entirety."

Philips contended that SIMPLICITY is "highly suggestive, laudatory, and weak and thus is only entitled to a narrow scope of protection." The Board agreed that the numerous registrations for marks containing SIMPLICITY or SIMPLE, and the parties' own use of the word "simple," weakens the scope of protection for Hunt's mark. However this suggestiveness "is not fatal to the likelihood of confusion ground" because "even weak marks are entitled to protection against confusion."

Philips further contended that the word SENSE is the dominant portion of its mark, since it appears first and is "ambiguous" in meaning. The Board, however, did not find any ambiguity: "we believe that consumers are likely to understand 'sense' as being suggestive of the products' practicality in that the goods 'make sense.'"

"Bearing in mind the suggestiveness of the terms 'simplicity' and 'sense,' the overall commercial impressions or connotations created by the marks in their entireties are not so different. Opposer's mark connotes goods possessing simple-construction or an easy-to-use quality; applicant's mark shares the same connotation with the additional connotation that the goods 'make sense' or are practical in nature.

Finally, the Board rejected Applicant's suggestion that SENSE AND SIMPLICITY is "a unitary mark that creates a strong and distinctive commercial impression." It found no altered connotation arising from the combination of the two words.

And so the Board found that this du Pont factor favored Opposer Hunt.

Concluding that confusion is likely, and resolving any doubts against Applicant, the Board sustained the opposition.

TTABlog comments: SENSE AND SIMPLICITY reminds me of SENSE AND SENSIBILITY. So I think Applicant's mark is unitary; but that's just me.

I'm troubled by the Board resolving any doubts against Applicant when Opposer has no federal registration. Since Opposer has the burden of proof on likelihood of confusion, shouldn't Applicant get the benefit of the doubt?

Text Copyright John L. Welch 2011.


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