Monday, August 19, 2013

Finding Living Plants Unrelated to Furniture Fabrics, TTAB Dismisses SUNBRELLA Opposition to SUN BRELLA'S

The Board dismissed this opposition to registration of the mark SUN BRELLA'S for "living plants," finding the mark not likely to cause confusion with the registered mark SUNBRELLA for fabrics for indoor and outdoor furniture. Opposer claimed that its mark is famous for Section 2(d) purposes, but its proofs fell short. [That put the kibosh on Opposer's Section 43(c) dilution claim]. The marks were close enough, but Opposer failed to convince the Board that the goods are complementary or sufficiently related. Glen Raven, Inc. v. Amerinova Properties, LLC, Opposition No. 91192496 (July 23, 2013) [not precedential].

Fame?: The Board found opposer's marks to be inherently strong, noting that they are registered on the Principal Register without a 2(f) claim. Moreover, according to the Board, the pleaded registrations, "being five years old, are incontestable and no longer to subject to challenge under Trademark Act Section 2(e)." [TTABlog comment: I maintain that "incontestability" is irrelevant in the TTAB context: regardless of whether the registrant has filed a Section 15 declaration to make the registration incontestable, the five-year statute of limitations of Section 14 prohibits a challenge under Section 2(e).]

The mark SUNBRELLA is also commercially strong, having been in use for more than 50 years on various types of fabric. Sales and advertising figures were substantial, and the mark has been extensively promoted. However, there was no direct evidence of awareness of the mark by the ultimate consumer. Since opposer does not sell to end users, that type of evidence would have been particularly important here: those users are the only class of customers that overlap with those of applicant. Nonetheless, SUNBRELLA is a strong mark among purchasers of outdoor furniture, but it is not well-known or famous.

The marks; Not surprisingly, the "strong visual and aural resemblance" of the marks, and their similar connotations and commercial impressions led the Board to conclude that this duPont factor favored opposer.

The Goods: The evidence "overwhelmingly" suggested that "in all but a very limited arena, the marketing channels and classes of consumers are so disparate that the marks will not be encountered by the same persons under similar buying conditions." And even in the limited arena of the "outdoor room" market, the Board found confusion unlikely.

Opposer argued that plants and furniture are sold together as part of "the outdoor room." According to opposer, these days the outdoor room is "more than just a chair and a Weber grill." Retailers position plants next to furniture in complementary fashion.

The Board observed that the test for determining whether goods are complementary is not that the goods are used together, but whether their use is complementary. Here, "[t]here is nothing in the evidence to suggest that live plants and fabrics, including those that are used in the manufacture of outdoor furniture and umbrellas, are complementary in nature and thus related." The Board concluded that, based on the evidence of record, the subject goods are not complementary.

Nevertheless, the question is whether the consuming public may think the goods to be related vis-a-vis the origin of the goods. Opposer's advertising and third-party media depicting or discussing outdoor rooms failed to suggest that a manufacturer of fabrics (or even a manufacturer of furniture) would be a source of live plants. Likewise, website evidence provided by opposer did not demonstrate that the purchasing public would perceive the goods as related. And the three third-party registrations submitted by opposer (two from the same owner) had very little probative value.

Opposer contended that landscape architects or designers offer outdoor room design, whereby they will purchase live plants and furniture; however, nothing in the record "suggests that this class of professional consumer purchases applicant's plants, or that, even if such customer did, he or she would be confused as to the source of origin of the goods."

Balancing the relevant duPont factors, the Board found confusion unlikely, and it dismissed Opposer's Section 2(d) claim.

Dilution: Because Opposer failed to prove fame for purposes of Section 2(d), it perforce did not meet the higher standard for fame under Section 43(c), and so the Board dismissed opposer's dilution claim as well.

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Text Copyright John L. Welch 2013.


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