Wednesday, August 07, 2019

Fame of VOLVO Mark Brings Section 2(d) Victory over WOLVOL for Computers

The Board sustained this opposition to registration of the mark WOLVOL for laptop computers and related goods, finding a likelihood of confusion with the registered mark VOLVO for a variety of goods and services, including computers and video screens. The Board found the mark VOLVO to be famous for automobiles, and further found that this fame "transfers to computer and video screen[s]." Volvo Trademark Holding AB v. Wolvol Inc., Opposition No. 91207836 (July 29, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The Goods: Because the involved goods overlap, the Board presumed that they travel in the same trade channels to the same classes of consumers. These du Pont factors weighed heavily in favor of a finding of likely confusion.

Fame: Volvo submitted sales and advertising figures as well as evidence regarding length of use of the mark, its numerous registrations, consumer exposure to the mark, and unsolicited media attention. Most of the evidence related to Volvo vehicles, but some related to technical aspects such as safety technologies and laser traffic monitoring devices. In any case, "[c]onsidering the volume and nature of the fame evidence," the Board found that "the fame of VOLVO extends beyond just vehicles and transfers to computer and video screen goods that we find most relevant to this proceeding. Cf. Recot, 54 USPQ2d at 1897 (erroneous to find that fame 'extends no farther than the products with which the marks are currently used' because fame 'is a dominant factor in the likelihood of confusion analysis for a famous mark, independent of the relatedness of the goods."

My first Volvo - 1927

VOLVO is a conceptually strong mark "to those unfamiliar with the dead language Latin." Opposer stated that the Latin word VOLVO means "I am rolling." Most customers would likely be unaware of this meaning. The word VOLVO "probably would be perceived either as a fanciful term or, for those familiar  with Latin, as a slightly suggestive word" in this context. As to commercial strength, there was no evidence of any use or registration of VOLVO or similar marks for similar goods or services. [Note that applicant submitted no evidence. - ed.].

The Marks: Since the involved goods are legally identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Moreover, a famous mark "casts a long shadow which competitors must avoid."

WOLVOL contains four of the five letters of VOLVO in the same order. The beginning "V" and "W" sound similar. The Board found the overall sounds of the marks to be similar. The common string OLVO engenders a visual similarity in the marks. The connotations and commercial impressions are not a significant point of distinction. The Board found that this factor favored opposer.

Conditions of Purchase: Given the ubiquity of computers, consumers would exercise nothing more than ordinary care in their purchasing decisions.

Conclusion: The Board found confusion likely, and so it sustained the opposition. It declined to reach Volvo's dilution claim.

Read comments and post your comment here.

TTABlog comment: My Latin is a bit rusty, but I thought "volvo" meant "I revolve." A Man Called Ove would never drive a Volvo.

Text Copyright John L. Welch 2019.


At 10:10 AM, Anonymous Anonymous said...

I think the board did a long stretch to find confusion. While famous marks may be entitled to a broader range of protection as to the range of goods, I think their famousness can limit their scope as to variations in the mark itself. Consumers familiar with VOLVO are familiar with that one spelling and have not seen the original Volvo company alter that spelling. So when an altered spelling comes along, why would they think the original Volvo is the source? Especially when the very first letter is altered?

I did consider that Germans pronounce w's like Americans pronounce v's, but then also recalled that Germans pronounce V's like Americans pronounce f's. We say Volkswagen and Germans say Folksvagen. So the Germans who see VOLVO pronounce it FOLFO, and would pronounce WOLVOL as VOLFOL. So the doctrine of foreign equivalents does not save the oppose.

At 7:18 PM, Anonymous Anonymous said...


ageto, agito, circuago, circumago, circumcurso, convoluto, gravito, miscere, revolvo, roto, tornare, verso, voluto, volvo

What Germans think or do matters none.

I have a '64 VW Bus and I call her Betsy.

I have an '82 Volvo Turbo and I call her the Volvo.

That's what matters.

I would agree that the Board did a long stretch to find cornfusion here.

Over and Out.


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