Thursday, July 21, 2011


Applicant MarineMax, Inc. ran aground in its attempt to register the marks DEALER FINANCIAL SERVICES and DEALER FINANCIAL SERVICES GROUP, in standard character and design form, for various financial services, including "providing loans for purchase or refinance." The Board found the marks likely to cause confusion with DEALERS FINANCE COMPANY & Design, registered for "financing services." Would you have appealed? In re MarineMax, Inc., Serial Nos. 77731739, 77731750, 77731757, and 77731762 (June 30, 2011) [not precedential].

The services: MarineMax's ship immediately began to sink when the Board found that its services overlap with those of the cited registration. Consequently, the Board presumed that the involved services are offered through the same channels of trade to the same classes of purchasers. These duPont factors "weigh heavily" against Applicant.

The marks: Moreover, because the services are in part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

The Board found that the wording in the design marks dominates over the non-distinctive design components. Furthermore, the word DEALER is emphasized in each mark in larger lettering, the remaining words being highly descriptive or generic. [Each application and the cited registration included disclaimers of some or all the words]. The Board, not surprisingly, found that the similarities outweigh the differences.

MarineMax did not go down without a fight. It submitted twelve third-party registrations in class 36 for marks beginning with the term DEALER or DEALERS, arguing that DEALER is a weak-formative. The Board, however, gave most of these registration little probative value: three of the registrations were owned by Registrant, and only four of the remaining registrations are "clearly in the same field of financing," and only one includes the overlapping word FINANCIAL. In any event, even if these registration did establish weakness, even weak marks are entitled to protection under Section 2(d).

Finally, MarineMax urged that customer sophistication would prevent confusion, but that argument didn't float either. Consumers for these services could include "the general population seeking financial services or automobile financing, which would include unsophisticated consumers who would use ordinary care in selecting such services."

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2011.


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