Friday, February 21, 2014


The application of Champion Dent Craft, Inc. to register the mark shown below [DENT disclaimed], for "repair of automobiles; repair of automobiles, namely, paintless dent repair," ran into a pair of Section 2(d) refusals. Examining Attorney Vivian Micznik First deemed the mark confusingly similar to the registered marks DENT KRAFTERS for "automobile body repair" [DENT disclaimed] and CHAMPION AUTO STORES for "maintenance of automobiles" [AUTO STORES disclaimed]. The Board affirmed the refusals. In re Champion Dent Craft, Inc., Serial No. 85698477 (February 19, 2014) [not precedential].

As to the services, applicant's "paintless dent repair" is legally identical to the "automobile body repair" of the first registration cited by Ms. First (i.e., the first First registration), because it is a subset thereof. Applicant's "repair of automobiles" is legally identical to the "maintenance of automobiles" of the second First registration. Third-party registrations and websites demonstrated that these services all may emanate from a single source under a single mark.

Applicant made a "feeble" attempt (Hey, that's my word! - ed.) to make a dent in the PTO's evidence by asserting that the services are distinguishable. It relied on extrinsic evidence in the form of a declaration from a person associated with applicant, claiming that applicant's services are rendered from a "mobile repair shop" and marketed to auto dealers in southwestern Virginia and southern West Virginia, whereas one registrant operates a repair shop in California and the other sells auto parts in Minnesota. Irrelevant! said the Board. There are no such limitations in the application or cited registrations, and applicant seeks nationwide rights, just as the registrations provide nationwide rights.

The legal identity or substantial similarity of the involved services required the Board to presume that the services are offered through the same channels of trade to the same classes of consumers. These factors weighed heavily against applicant.

Turning to the marks, the Board found that applicant's mark is "similar to" the DENT KRAFTERS mark. Acknowledging the inclusion of the word CHAMPION in applicant's mark, the Board nonetheless found that the essential identity of DENT CRAFT to DENT KRAFTERS outweighed any differences in the marks. In making this determination, the Board noted that the services are identical (and so a lesser degree of similarity between the marks is necessary to support a finding of likely confusion).

As to the second First-cited mark, the dominant portion is the word CHAMPION, since AUTO STORES is disclaimed. Notwithstanding its prior analysis, the Board noted that purchasers in general are inclined to focus on the first word in a mark, and here the first words are identical. In short, the marks are similar in sound, appearance, and meaning (with CHAMPION connoting the best or superior services). Consequently the marks engender similar commercial impressions.

Applicant pointed to ten third-party registrations for marks that include CHAMP, CHAMPION, DENT, or CRAFT, but absent proof of use and public familiarity with the marks, this evidence had little probative value. Applicant's asserted that the involved services are purchased by knowledgeable and discriminating customers, but the Board noted that the services would include inexpensive work, such as oil changes, fluid replacement, and body touch-up. Even if the purchasers were careful, the Board noted, careful purchasers are not immune from source confusion when confronted with similar marks for related services.

Finally, applicant averred that it was unaware of any actual confusion, but that statement deserves little weight in an ex parte context (where the registrant has no opportunity to be heard on the issue). Moreover, there was no evidence of the extent of use of the marks, so the Board could not determine whether there had been a meaningful opportunity for confusion to occur. [Note, too, applicant's assertions about geographical disparity - ed.].

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusals, noting that any doubt in this regard must be resolved in favor of the prior registrant.

Read comments and post your comment here.

TTABlog note:  Do you think this was a WYHA? As to both refusals, or just one?

Text Copyright John L. Welch 2014.


At 11:37 AM, Anonymous Anonymous said...

I was surprised that "DENT KRAFTERS" was affirmed, and still feel like the applicant left some good arguments on the table against both. They should have focused more on similarity of the marks.


Post a Comment

<< Home