Friday, August 12, 2011

Test Your TTAB Judge-Ability: Are AUTO BY RENT and AUTO-BY-TEL Confusingly Similar for Auto-Related Services

Applicant sought to register the mark AUTO BY RENT & Design for "automobile dealerships," but Opposer claimed likelihood of confusion with its mark AUTO-BY-TEL for various vehicle-related services, including "referrals in the field of automobile and truck sales and leasing." How do you think this came out? Autobytel Inc. v. Auto By Rent, Inc., Opposition No. 91180067 (July 28, 2011) [not precedential].

A divided Board panel sustained the opposition. The panel majority found the services to be complementary and related, and the marks to be more similar than dissimilar. It noted that the channels of trade in the involved application and registration are not restricted, and found that the services "are likely to be marketed through the same channels of trade to all manner of consumers."

The Board denied Opposer's dilution claim because of a failure to provide sufficient proof of fame.

Judge Bucher dissented on the 2(d) issue, maintaining that the actual services offered by the parties travel in different channels of trade: Opposer's services are directed to new car dealerships, while Applicant directs its "rent-to-own used cars to marginal customers in rural Missouri." [But as the panel majority points out in footnote 9, there are no such restrictions in the involved application or registration. ed.]

Judge Bucher further asserted that the marks are different in appearance, "jarringly different aurally," and create "very different connotations." He would find these differences alone to be dispositive of the 2(d) issue.

TTABlog comment: I agree with the majority on the first point (channels of trade) and with Judge Bucher on the second, except that I would couple the differences in marks with the differences in the services to find confusion unlikely.

Text Copyright John L. Welch 2011.


At 1:51 PM, Anonymous Anonymous said...

Before you get to the goods/services or channels of trade you have to have two marks that are similar.

I do not think AUTO BY RENT and AUTOBYTEL are close enough to waste time going further. I would just stop there. Also, the mark as used has no dashes in AUTOBYTEL.

Was AUTOBYTEL a "buy an auto by telephone business" and morphed into the Internet?

New counsel and appeal coming? USDC?


Post a Comment

<< Home