Thursday, November 03, 2011

Test Your TTAB Judge-Ability on this Section 2(d) Refusal

Applicant G&F Manufacturing sought to register the mark shown below for "swimming pool heat pumps" [SWIMMING POOL HEAT PUMPS disclaimed], but the application was refused under Section 2(d) in view of the registered mark GULFSTREAM for "whirlpool baths and related accessories," including pumps. Applicant submitted a summary of the results of a Google brand search, purportedly showing that "many organizations in Florida ... utilize 'gulfstream' in their names." How do you think this came out? In re G&F Manufacturing, Inc., Serial No. 77632210 (October 13, 2011) [not precedential].

The Board found the evidence of third-party use unpersuasive because the search results were truncated, there was insufficient context for evaluation of the evidence, and in any case most of the uses of GULFSTREAM were in connection with goods or services unrelated to the goods at issue here. In sum, the registered mark GULFSTREAM is entitled to more than a narrow scope of protection for Registrant's goods.

Not surprisingly, the Board found the word GULFSTREAM to be the dominant portion of Applicant's mark. The wave design reinforces the "the terms comprising gulfstream" and the additional wording is generic and lacks source-identifying significance. The Board concluded that the similarities between the two marks outweigh their differences.

As to the goods, both include pumps for aquatic use. Indeed, Registrant's goods are broadly identified to include "whirlpool bath pumps," which may include heat pumps for whirlpools. Moreover, Examining Attorney Sung submitted third-party registrations that include goods of the type found in both the application and the registration. The Board therefore found that the goods are related.

There were no restrictions as to channels of trade in either the application or registration, and so the Board must presume that they travel in all normal channels for those goods, to all normal classes of consumers.

Applicant contended that its goods are expensive and would be purchased with care, but even if true, the Board noted, purchasers are not immune from source confusion when "the similar nature of the marks and the relatedness of the goods outweigh any sophisticated purchasing decision."

Finally, Applicant claimed that the involved marks have co-existed for years without any actual confusion. However, such a claim carries little weight in an ex parte context, where the registrant has no opportunity to be heard on the subject.

Noting that any doubt raised by applicant must be resolved in favor of the prior registrant, the Board affirmed the refusal to register.

TTABlog note: I was tempted to make this a WYHA, but we just had one yesterday.

Text Copyright John L. Welch 2011.


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