Monday, September 10, 2012

Test Your TTAB Judge-Ability: Are These Automobile Design Marks Confusingly Similar?

The PTO refused registration of the three configuration marks shown immediately below, for "land vehicles, namely, automobiles and engines for land vehicles." Examining Attorney William Breckenfeld deemed them to be confusingly similar to the two design marks shown next below, for "motor vehicles, namely automobiles and structural parts therefor" (the first covering only the roof line, and the second only the C-scoop). Applying the eye-ball test, how would you rule? In re Carroll Hall Shelby Trust, Serial Nos. 77355668, 77356004, and 77356033 (August 16, 2012) [not precedential].

The Board found the goods to be legally identical, and it presumed that they travel in the same normal channels of trade to the same classes of consumers. These du Pont factors weighed heavily in favor of a finding of likely confusion.

Of course, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a Section 2(d) refusal.

As to the mark of the first cited registration, the Board found the roof line to be shorter and not as flat as the roof line in the three applications. And so it reversed the refusals based on that registration.

As to the second cited registration, the Board observed that the C-scoop design "appears to b e incorporated virtually in its entirety in the marks in each of the three applications. Although the applied-for marks are not identical to the registered design, there is a "C-scoop" in each.

We note that the C-scoop is but one aspect of what appears as a “muscle car” in the overall “outward appearance of a vehicle” that is captured by the descriptions in the marks in each of the three applications. As noted by the designer, “[t]he Shelby GT-350 was built on a Ford Mustang platform” *** In this regard, we note that although the C-scoop is part of a larger mark in each of the applications, at the same time, it is still a separately recognizable element of the mark. On the other hand, the C-scoop in the ‘331 registration, which constitutes the whole of that mark, is incorporated in full in some version of the marks in the applications.

The Board found that the commercial impression engendered by the applied-for marks is similar to that created by the registered C-scoop design.

Finally, the Board noted an "unusual situation" that must be considered here: the Shelby automobile is based on the Ford Mustang platform "under various agreements with Ford Motor Company." However, those agreements were never made part of the record. Applicant did not submit any evidence of a consent from Ford, and the Board "must not infer such consent exists."

And so the Board reversed one set of refusals and affirmed the other set.

Text Copyright John L. Welch 2012.


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