Monday, August 12, 2019

TTABlog Test: Is "KP QUIK STOP & Design" Confusable With KWIK STOP for Convenience Stores?

The USPTO refused to register the mark KP QUIK STOP & Design for retail convenience stores, finding it likely to cause confusion with the registered mark KWIK STOP for "Retail convenience store services featuring gasoline, other petroleum products and alcoholic beverages." The services are identical, but what about the marks? Applicant PCS Petroleum argued that the registered mark is weak and therefore should be given a limited scope of protection. How do you think this came out? In re PCS Petroleum LLC, Serial No. 87728983 (August 8, 2019) [not precedential] (Opinion by Judge George C. Pologeorgis).

Because the involved services overlap, the Board must presume that they travel in the same trade channels to the same classes of consumers. Thus the second and third du Pont factors favored affirmance of the refusal.

The Board next considered the strength of the cited mark under the fifth and sixth du Pont factors. There was no evidence of fame of the cite mark in this ex parte appeal (and the Examining Attorney is under no obligation to demonstrate such fame). The Board therefore found the fifth factor to be neutral.

As to the sixth factor, the number and nature of similar marks for similar services, the Board observed that "third-party registrations and use of similar marks can bear on the strength or weakness of a registrant’s mark in two ways: commercially and conceptually."

First, if a mark, or an element of a mark, is used extensively in commerce by a number of third parties, that could undermine its commercial strength, as the consuming public may have become familiar with a multiplicity of the same or similar marks, and can distinguish them based on minor differences. *** Second, if there is evidence that a mark, or an element of a mark, is commonly adopted by many different registrants, that may indicate that the common element has some non-source identifying significance that undermines its conceptual strength as an indicator of a single source.

Applicant PCS submitted numerous use-based third-party registrations for marks consisting of or containing the term QUICK or its phonetic equivalents, for services similar to those of the cited registration: for example, QUICK STUFF, KWIK BUCKS, and KWICK PANTRY, and KWIK FILL. Although there was no evidence of the extent of use of these marks, they are relevant to show that a particular term "has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak." Juice Generation, 115 USPQ2d at 1675 (quoting 2 McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:90 (4th ed. 2015).

PCS also submitted proffered evidence demonstrating third-party use of the terms QUICK STOP, QUIK STOP, QWICK STOP and KWIK STOP for similar services. Again, this evidence did not establish the extent to which consumers have been exposed to such actual uses, but " the nontrivial amount and geographic extent throughout the United States of such third party uses of the phrase QUICK STOP or its phonetic equivalents demonstrates that the phrase is highly suggestive of such services, leading us to the conclusion that that phrase is weak."

The Board found "a mark comprising, in whole or in part, the phrase “QUICK STOP” or phonetically equivalent variations thereof, used in connection with convenience store services is highly suggestive of such services and therefore, weak. As such, the cited mark is entitled to only a restricted scope of protection."

In other words, Registrant’s KWIK STOP mark is not entitled to such a broad scope of protection that it will bar the registration of every mark comprising, in whole or in part, the term “KWIK STOP” or variations thereof; it is, nevertheless, sufficient to bar the registration of marks “as to which the resemblance to [Registrant’s mark] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two.”

Turning to the first du Pont factor, the similarity or dissimilarity of the marks, the Board found that although there are differences in appearance and sound, the marks convey the same connotation and commercial impressions. However, in view of the weakness of the cited mark and the limited scope of protection to which it is entitled, the Board found that "the inclusion of the design element, as well as the arbitrary letters KP, in Applicant’s mark are sufficient to distinguish the marks for likelihood of confusion purposes, notwithstanding our finding that the services at issue are identical in part."

The Board therefore reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Evidence of third-party use and registration is often the make-or-break issue in these 2(d) appeals.

Text Copyright John L. Welch 2019.


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