Friday, June 27, 2014

Test Your TTAB Judge-Ability: Is GLOBAL-SP for O-Rings Confusable with SP DIRECT for Gaskets?

The PTO refused registration of the mark Global-SP for goods including "O-rings of rubber for automobiles" and "non-metal packings for forming seals for automobiles," on the ground of likelihood of confusion with the registered mark SP DIRECT for "automotive aftermarket parts, namely, ... gaskets." On appeal, the Board found the goods to be legally identical and purchaser "sophistication" not likely to be a factor with regard to these relatively inexpensive items. But what about the marks? Confusable? How do you think this came out? In re NOK Corporation, Serial No. 79090703 (June 25, 2014) [not precedential].

Applicant NOK argued that the "common component SP in both marks is weak," relying on 23 third-party registrations containing "SP," and it offered possible alternative meanings for "global" and "direct" that are not descriptive of automotive goods. In short, NOK maintained that the marks are dissimilar in sight, sound, and connotation.

Examining Attorney Michelle E. Dubois, on the other hand, maintained that SP is the dominant element of each mark, since the letter combination "SP" has no meaning in the relevant field, whereas "global" and "direct" are descriptive or highly suggestive. She asserted that "[c]onsumers are likely to believe that GLOBAL-SP is an international line of products and SP DIRECT is a line of products from the same company that is provided directly to the consumer, without an intervening agent."

The Board found the marks to be similar in meaning, sound, appearance, and commercial impression. The fact that both marks contain the SP letter combination outweighed the differences between the marks. It agreed with "all of the reasons" presented by the examining attorney for concluding that NOK had not shown SP to be a weak formative. Many of the third-party registrations submitted by NOK are owned by a single entity, and cover tires. There was no showing that tires are related to the goods here at issue. Nor did NOK offer a possible meaning or significance for "SP" in the automotive industry.

The Board also agreed with the PTO that "direct" and "global" are not particularly distinctive, and that these terms suggest the manner or geographic range in which the goods may be purchased. The alternative meanings of these words that NOK offered were not reasonably applicable in the present context. "Ultimately, consumers already familiar with the mark SP DIRECT are likely to perceive a strong similarity to Applicant's GLOBAL-SP based on the shared element SP."

And so the Board knocked out NOK's application to register.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.


Post a Comment

<< Home