Tuesday, May 08, 2018

Finding Marketplace Strength and Actual Confusion, TTAB Sustains "TOOLS USA" Opposition

The Board sustained this Section 2(d) opposition to registration of the mark TOOL USA.COM & Design for "Manually operated hand tools, namely, hammers, trowels, sanding wire wool, drill accessories, namely, bits for hand drills" [TOOLS and USA.COM disclaimed], finding the mark likely to cause confusion with Opposer's common law mark TOOLS USA & Design used in connection with opposer's online retail website at www.toolsusa.com, where it sells compressors, hand tools, auto body hammers, and other products. Three incidents of actual confusion weighed in opposer's favor in the Du Pont analysis. Standard Tools and Equipment Co. v. Dropship LLC DBS Tool USA, Opposition No. 91222920 (May 7, 2018) [not precedential] (Opinion by Judge Angela Lykos).

Priority: Applicant was entitled to rely on its filing date of August 26, 2014 as its constructive first use date. Opposer's testimony asserted continuous use of its mark since 1999, corroborated by website printouts.And so opposer had priority.

The goods: Applicant's "hammers" encompassed  opposer's "auto body hammers," and therefore the involved goods are identical in part.

The marks: Since the goods are in part identical, a lesser degree of similarity between the marks is required for a finding of likely confusion. The Board found the literal portions of the marks to be highly similar, since "applicant's mark represents the domain name version of opposer's mark in singular form." The flag motifs are similarly reminiscent of the American flag and both "reinforce the geographic significance of the term USA and add a patriotic impression." The overall connotation and commercial impression are the same: the promotion of tools manufactured and sold in the United States.

The TOOLS USA portion of opposer's mark is geographically descriptive and hence conceptually and inherently weak. However, the design element of opposer's mark is inherently distinctive. Also, the word order of TOOLS USA "is not entirely natural such that the term is less clearly descriptive than would be the term 'USA TOOLS.'"

The evidence demonstrated some degree of secondary meaning and commercial strength in the TOOLS USA phrase. Opposer proved twenty years of continuous and substantially exclusive use, with $100 million in sales revenue since 2002 and $2.4 million in advertising expenditures since 2003. The incidents of actual confusion discussed below also confirmed the phrase's secondary meaning.

Therefore the Board accorded the geographically descriptive portion of opposer's mark "more weight than we otherwise would." It concluded that the marks are similar in sight, sound, connotation, and commercial impression, and the first du Pont factor weighed in favor of opposer.

Actual Confusion: Opposer's witness recounted three incidents of actual confusion vis-a-vis opposer's website and applicant's website and trademark: two misdirected complaints and an attempted product return. Applicant pooh-poohed these incidents as involving a negligible portion of the market, but the Board did not agree. "The best evidence of likelihood of confusion is provided by evidence of actual confusion."

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.

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TTABlog comment: Actual confusion is seldom proven at the Board.

Text Copyright John L. Welch 2018.


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