Tuesday, September 24, 2019

TTAB Affirms Section 2(a) False Connection Refusal of CALIFORNIA BEEMERS for Auto Dealership

The Board affirmed a Section 2(a) refusal of CALIFORNIA BEEMERS for automobile dealership and repair services, finding that the mark falsely suggests a connection with the German company, Bayerishce Motoren Werke (BMW). The evidence submitted by Examining Attorney Marc J. Leipzig established that BMW is famous in the United States for cars, and that the applied-for mark CALIFORNIA BEEMERS points uniquely and unmistakably to BMW. In re West L.A. Corp. d/b/a California Beemers, Serial No. 87354651 (September 19, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

To support a Section 2(a) false connection refusal, the USPTO must establish that:

(1) CALIFORNIA BEEMERS is the same as, or a close approximation of, BMW’s previously used name or identity; (2) CALIFORNIA BEEMERS would be recognized as such, in that it points uniquely and unmistakably to BMW; 3) BMW is not connected with Applicant’s activities under the CALIFORNIA BEEMERS mark; and 4) BMW’s name or identity is of sufficient fame or reputation that when Applicant uses CALIFORNIA BEEMERS in connection with its services, a connection with BMW would be presumed.

Dictionary definitions referred to "BEEMER" as an informal term for an automobile manufactured by the German company BMW. In short, they confirmed that "Beemer" has only one meaning: BMW vehicles. Numerous media articles also referred to BMW cars as "Beemers."

Applicant argued that "Beemer" is not the same as BMW's name or identity because BMW does not itself use the term. Irrelevant, said the Board. For example, PRINCESS KATE was found to falsely suggest a connection with Kate Middleton although she does not use the term. Whether BMW has objected to applicant's use of the term is also irrelevant.

Applicant's own website made it clear that CALIFORNIA BEEMERS points uniquely and unmistakably to BMW. [See illustration above from Applicant's specimen of use]. In fact, applicant promotes its "BMW Service."

Media and other third-party uses of BMW establish that BEEMER is a commonly-used and recognized nickname or informal name for BMW and its vehicles. The word CALIFORNIA merely identifies applicant's location.

Applicant pointed to third-party registrations for BIMRS & Design, BIMMER SPECIALIST, BimmerFix, and BEEMERVILLE, for goods and services related to autos and motorcycles, but the Board found them to be of no probative value. There was no proof that the marks are actually in use and no evidence that the owners were not affiliated with BMW. Three of the four registrations do not include the word BEEMER. And in any case, the Board is not bound by the issuance of a registration for some other mark and must make its decision on the record before it.

In sum, CALIFORNIA BEEMERS points uniquely and unmistakably to BMW. "Applicant's specimen and all of the evidence reveal that the term BEEMER points to nothing else."

Applicant conceded that it is not connected with BMW. And so the final issue was whether BMW is sufficiently famous that consumers would presume a connection with BMW when the CALIFORNIA BEEMERS mark is used. In this context, unlike in the dilution or likelihood of confusion contexts, "the key issue is whether the name per se ... as used would point uniquely to the person or institution." The Board concluded from the record evidence that CALIFORNIA BEEMERS would do so.

. . . Applicant’s use of CALIFORNIA BEEMERS would point automobile buyers and owners of automobiles in need of repair uniquely to BMW. Indeed, the record establishes BMW’s fame in the United States for cars, and given Applicant’s use of BMW’s nickname BEEMER for car sales and car repair, “we may draw an inference that applicant intends to create a connection with” BMW, and that the public would make the false association.

Conclusion: The examining attorney established that use of applicant's mark would falsely suggest a connection with BMW. And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: I try to avoid using the term "applied-for mark." One does not apply for a mark, but for a registration. This reminds me of the common misuse of the word "trademark" as a verb.

Text Copyright John L. Welch 2019.


At 9:20 AM, Blogger Catherine said...

I hope the Applicant appeals this decision. The TTAB is dead wrong here, IMHO -- there is no way anyone seeing CALIFORNIA BEEMERS is going to think BMW has any connection to that company. Clearly they are using the reference (which obviously is to BMW in an INFORMATIONAL sense) to let customers know they work on or deal in BMWs. This is permissible use. How else are they supposed to communicate that fact to customers? This is the VW case all over again, but two steps removed because 1) they are not using the BMW logo; and 2) they are not even using the official company name, they are specifically using a word that BMW would never dream of using. The TTAB is way off base.

Re your comment about avoiding the term "applied for mark," you are right ON base - I never thought about that but your point is well taken and I will make sure I avoid it in future. Thanks!

At 12:57 PM, Blogger Bob Cumbow said...

Bravo for your comment, John. When quoting the Board using the phrase "applied-for mark", put "[sic]" after that phrase. Maybe we will get the Board to correct this too-frequent error.

At 3:57 PM, Anonymous Anonymous said...

Ditto for "copyrighted" and "registration of a work." The copyrights to works entitled to copyright protection are created at the time of fixation and it is the copyrights to works that are registered.

At 8:55 AM, Blogger John L. Welch said...

Bob, you're the one who put the idea in my head, via a comment you made on the list serv.

At 5:44 PM, Anonymous Anonymous said...

The phrase "subject mark" is probably better, but I think you're reading too much into that phrase. It's just used to refer to the "mark" in the application for registration. It doesn't indicate an application for a "mark."


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