Monday, September 26, 2011

Fame Propels AUTOZONE to TTAB 2(d) Victory in DENT ZONE Cancellation

Registrant Dent Zone was badly banged up in its collision with AutoZone in this Section 2(d) cancellation proceeding. The Board found the mark DENT ZONE, in standard character and design form, for vehicle maintenance and repair, likely to cause confusion with the registered mark AUTOZONE for retail auto parts store services and auto repair services. The fame of the AUTOZONE mark dominated the du Pont analysis, outweighing the limited proofs of third-party use and the lack of actual confusion evidence. AutoZone Parts, Inc. v. Dent Zone Companies, Inc., 100 USPQ2d 1356 (TTAB 2011) [not precedential].

Fame: AutoZone's sales revenues in 2008 were $6.5 billion. It spent more than $750 million in advertising since 1985, operates more than 4000 retail stores, and reaches ninety percent of the population more than 40 times per year with its radio and television advertising . Although AutoZone did not place these numbers in context, i.e., in comparison with other retail auto parts store services, and although it did not provide direct evidence of consumer recognition of its mark, the Board found the evidence sufficient to establish fame for Section 2(d) purposes.

The marks: The Board, not surprisingly, found that DENT ZONE is the dominant portion of Dent Zone's registered design mark. Moreover, the words "auto" and "dent" are descriptive in the respective marks. Both AUTOZONE and DENT ZONE suggest "a place or zone for automobile-related services." The differences in appearance and sound are outweighed by the "other similarities in the marks." When compared in their entireties, "and particularly in view of the fame of the AUTOZONE mark," they are more similar than dissimilar.

The services: The Board found the services to be "sufficiently related" for purposes of the duPont analysis. The evidence showed that AutoZone sells and rents tools, and sells parts, for auto repair, and at its stores it offers testing, repair, diagnosis, and installation of parts. Moreover, Petitioner submitted 23 use-based registrations covering both auto repair and auto parts services.

Since there are no restrictions in the involved registrations, the Board presumed that the involved services are purchased by the same consumers, i.e., automobile owners. To the extent that the customers are "sophisticated," the Board observed that even careful purchasers are likely to be confused when similar marks are used for similar services.

Third-party use: The evidence of third-party use of "zone" marks was of little or no probative value because it was not accompanied by proof of the extent or nature of the use. [Then why give probative value to Petitioner's third-party registrations absent such proof? -ed].

Lack of actual confusion: Dent Zone pointed to the lack of actual confusion evidence despite the concurrent use of the marks since the mid-1990s. The Board, however, pooh-poohed this lack of evidence, since actual confusion evidence is not required under Section 2(d), since that evidence is often "difficult to adduce," and since the lack of such evidence is here outweighed by the other factors.

Text Copyright John L. Welch 2011.


At 8:31 AM, Blogger Frank said...

This is another of those terrible decisions we get from the TTAB whenever a mark they have heard of comes before them. The "famous" mark gets all the judgement calls and the other mark gets the shaft. There is absolutely no likelihood of confusion here or of dilution.

At 12:43 PM, Anonymous Anonymous said...

This case started in 2005. Perhaps the Registrant would have been better off with an expedited proceeding.

At 2:11 PM, Anonymous Anonymous said...

Frank, are you serious? Do a quick Lexis search- there's a line of appellate precedent a mile long for AutoZone's marks and the protection of "-Zone" in connection with auto services.
If you think the TTAB is out of line by following appellate precedent, then we obviously disagree.

At 4:45 PM, Blogger matthew h said...

The TTAB skimped on its actual confusion analysis. Over ten years of use seems like it should have been accorded some more weight.


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