Wednesday, November 07, 2018

TTAB Test: Is MISEL DISEL Confusable with DIESEL for Pre-Shave Liquids?

Diesel S.p.A. opposed an application to register MISEL DISEL for "smooth shave enhancer, namely, pre-shave liquid," claiming a likelihood of confusion with its registered mark DIESEL for, inter alia, pre- and after shave creams and lotions. The goods are essentially identical, or at least closely related, but what about the marks? How do you think this came out? Diesel S.p.A. v. Misel Disel, LLC, Opposition No. 91225389 (November 5, 2018) [not precedential] (Opinion by Judge David Mermelstein).

The Marks:The Board spent little time discussing the similarity or dissimilarity of the marks. It found the word DISEL to be "highly similar" to the word DIESEL: they look similar and applicant' mark is likely to be pronounced the same as DIESEL because it looks like a misspelling of the common word"diesel." Although applicant's mark begins with MISEL, and the first word in a mark is the portion that consumers notice first [DUH! - ed.], MISEL is itself similar to DISEL and invites a rhyming pronunciation of MISEL similar to "diesel:" i.e., mee-zul dee-zul. Because of the rhyme, MISEL does not creat a separate commercial impression from DISEL. The Board concluded that the marks are "substantially similar."

The Goods: The Board spent more time coming to the conclusion that the goods are in part identical or closely related. Applicant's goods comprise a "smooth shave enhancer," whatever that is. The Board found that it is encompassed by opposer's "pre- and after shave creams and lotions." But even if the goods did not overlap, they are closely related.

The Board presumed that the overlapping goods travel in the same, normal trade channels to the same classes of consumers. The items are relatively low-priced and would be purchased "without such careful consideration as would alleviate confusion."

Applicant argued that the fame of the DIESEL mark (for apparel) works against Opposer, but the Board pointed out that the fame of a mark is never a negative factor: "no mark is too famous to be confused." Indeed, the more well-known a mark, the easier it will be to find a likelihood of confusion under the du Pont factors. However, the Board agreed with applicant that the fame of DIESEL in the apparel field does not suggest that purchasers are more likely to believe that Opposer is the source of applicant's products.

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

Read comments and post your comment here.

TTABlog comment: How did you do? FWIW: I would pronounce applicant's mark MISSLE DISSLE.

Text Copyright John L. Welch 2018.


At 9:15 AM, Anonymous Anonymous said...

I agree, I would pronounce it "dissel" also. I don't see the confusion at all.

At 9:38 AM, Anonymous Anonymous said...

I disagree with the outcome of this one. I would pronounce the mark as "missel dissel" in a rhyming pattern. The tendency of a consumer is to pronounce the name in a rhyming manner, and they are going to start in their mind by pronouncing "MISEL" as "missle" or "missel" rather then "meesle." I think the duplication of rhyming components creates a different overall commercial impression between the marks.

That's also disappointing to read that the Board focused more on the similarity/dissimilarity of the goods rather than the names since this case would seeming rise or fall based on the similarity or dissimilarity of the names. Maybe I glossed over this too quickly, but it seems apparent that the goods are highly related.

I give the pro se applicant credit for going the distance on an opposition, but I feel like if he had retained capable counsel this could have likely gone the other way.

At 11:34 AM, Anonymous Anonymous said...

What they ^ said.

At 1:57 PM, Anonymous Anonymous said...

Ludicrous outcome. Sometimes I wonder whether the people at the USPTO are consumers, as opposed to AI droids.

At 5:22 PM, Anonymous Anonymous said...

This is a ridiculous decision. What happened to the rule that there is no correct punctuation of a mark? I would have pronounced it as “missle dissle” especially given the company’s branding - “Be clean as a whistle, with a shave by Misel Disel.” Or I would have pronounced it as mizel dizel (with long ‘i’ sounds).


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