Monday, December 17, 2018

Finding Confusion and Dilution Likely, TTAB Sustains AMERICAN EXPRESS Oppositions to AMERIXPRESS

One day after oral argument, the Board issued its 38-page decision sustaining the oppositions of American Express to registration of AMERIXPRESS for "Import agency services" and AMERIXPRESS LLC for nutritional supplements and "Export agency services for the goods of others," on the grounds of likelihood of confusion with, and likelihood of dilution of, the mark AMERICAN EXPRESS, registered for various financial and credit card services, and for "general merchandise mail order services." Opposer's staggering revenues and advertising figures convinced the Board that AMERICAN EXPRESS is a famous mark for credit card services, enjoying both "likelihood of confusion fame" and fame for purposes of likelihood of dilution. American Express Marketing & Development Corp. v. Tung B. Vo, Oppositions Nos 91230559 and 91232714 (December 13, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Likelihood-of-Confusion Fame: "In determining the strength of a mark, we consider both its inherent strength, based on the nature of the mark itself, and its commercial strength, based on marketplace recognition of the mark." There was no evidence or testimony regarding third-party use or registration of AMERICAN EXPRESS or variations thereof that would suggest that the mark is not inherently distinctive.

As to commercial strength, the evidence showed that in the years 2010-2016, some 50 million AMERICAN EXPRESS credit cards were in force in the U.S., with total billing near or above $500 billion per year and annual revenues in the $10-$13 billion dollar range. On average, AmEx has invested $2 billion per year since 2013 in advertising and promotion in the United States. (Emphasis by the Board). An internal survey indicated 98-99% consumer recognition. The AmEx website has generated about 1.7 billion page views since 2013, with more than 400 million unique visitors. Forbes ranked AMERICAN EXPRESS as the world's 23rd most valuable brand.

The Board concluded that AMERICAN EXPRESS is a famous mark in connection with credit card services. The Board agreed with applicant that the mark is not famous for import or export services or for supplements, but it observed that this does not undercut the scope of protection accorded a famous mark. See Recot Inc. v. M.C. Becton, 54 USPQd at 1897. Accordingly, the Board concluded that the AMERICAN EXPRESS mark is entitled to "a very broad scope of protection."

The Marks: Not surprisingly, the Board found applicant's marks to be similar to the AMERICAN EXPRESS mark in appearance, sound, meaning, and commercial impression. Consumers will interpret AMERI as a shortened form of AMERICAN and XPRESS as a shortened form of EXPRESS. The disclaimed term LLC has no source-identifying significance.

The Goods and Services: The Board acknowledged that applicant's goods and services differ from those of Opposer AmEx. However, the Section 2(d) test is not whether the goods/services are likely to be confused, but whether purchasers are likely to be confused as to source, connection, or sponsorship between the providers of the goods and services. The Board concluded that consumers will likely mistakenly believe that applicant's products and services are somehow sponsored by or associated with AmEx. It observed that the fame of opposer's mark plays a role in the analysis of this factor, since famous marks "cast a long shadow."

Consumers familiar with Opposer’s famous AMERICAN EXPRESS credit card services, as well as its cross border payment services, local currency corporate cards, foreign remittance services, electronic funds transfer services and foreign currency exchange and payments services, upon encountering Applicant’s AMERIXPRESS import and export services will mistakenly believe that the services emanate from the same source or are otherwise somehow affiliated because of the similarities of the marks. Likewise, consumers familiar with Opposer’s famous AMERICAN EXPRESS credit card services and its “general merchandise mail order services” upon encountering Applicant’s AMERIXPRESS vitamin, mineral and nutritional supplements are likely to mistakenly believe that Applicant’s goods emanate from or are associated with 0pposer’s services.

Trade Channels: There are no restrictions on trade channels or classes of consumers in the involved applications and cited registrations. A consumer of applicant's services may also utilize AmEx's various credit card and financial services. And applicant's supplements may be sold through AmEx's general merchandise mail order services.

Purchaser Care: Despite the sparse evidence, even assuming that consumers will exercise a high degree of care, "the potential for confusion is accentuated by the significance of Opposer's AMERICAN EXPRESS mark, as well as the similarity of the marks because many potential consumers may not notice the differences in the marks."

Conclusion: The Board found confusion likely and it therefore sustained opposer's Section 2(d) claim.

Likelihood of Dilution: Keeping in mind that, for dilution purposes, a famous mark is one that has become a "household name," the Board found that AMERICAN EXPRESS is famous and "was so prior to the filing date of Applicant's applications [in 2016]"

As to the marks at issue, the Board found them to be "sufficiently similar in their overall commercial impression" that "consumers encountering Applicant's AMERIXPRESS mark will immediately be reminded of Opposer's famous AMERICAN EXPRESS."

The Board also found that AMERICAN EXPRESS is inherently distinctive, that opposer is engaging in substantially exclusive use of the mark, and that the mark has a high degree of consumers recognition. There was no evidence that applicant intended to create an association with the mark, nor was there evidence of actual association.

Conclusion: The dilution factors, other than intent and actual association, favored a finding of likelihood of dilution, and so the Board sustained opposer's Section 43(c) claim.

Read comments and post your comment here.

TTABlog comment: Is AMERICAN EXPRESS inherently distinctive? It's an American company that provides fast services.

Text Copyright John L. Welch 2018.


At 12:49 PM, Blogger Jonathan Hudis said...

A successful dilution decision? Why was this decision not designated as precedential?

At 8:48 AM, Anonymous Anonymous said...

Where is the evidence that the applicant's potential customers will associate the opposer's services with the applicant's mark when used in connection with import agency services and nutritional products? The Board used evidence of fame presented in the 2(d) analysis as grounds to find that the opposer's mark is widely recognized. There is little dispute on that point. However, the real question is how distinctive is the opposer's mark within the applicant's class of consumers, and will those same customers associate applicant's mark with opposer's mark? There is no evidence on that point. Factor "F" is the most important factor out of eight factors used in showing potential dilution. American Express got an evidentiary "pass" on this one!


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