Monday, April 10, 2023

TTABlog Test: Is "K2 MOTORCARS & Design" Confusable With "K2 MOTOR & Design" For Automobile-Related Services?

By my count, we've now had 48 Section 2(d) decisions this year, 4 of which resulted in reversals. Here's the latest one. How do you think it came out? In re K2 Motorcars LLC, Serial No. 90130036 (April 7, 2023) [not precedential] (Opinion by Judge Angela Lykos).

Applicant sought to register its mark (first above) for "online dealership services featuring automobiles," but the Board found confusion likely with the registered mark shown second above, for retail and wholesale services (including online) for auto parts and accessories. Third-party website evidence convinced the Board that the services are related and offered in the same trade channels to the same classes of consumers.

As to the strength of the cited mark, there was no evidence of third-party uses that would weaken the mark. Since it is registered on the Principal Register without a Section 2(f) claim, the mark is considered inherently distinctive. And so the Board accorded the mark "the normal scope of protection to which inherently distinctive marks are entitled."

Turning to a comparison of the marks, the Board noted that, although marks must be considered in their entireties, the literal portion of a word-and-design mark is often considered the dominant part. That principle applies, however, when the literal portion can be clearly discerned by the consumer. Here, the font of "K-2" in the cited mark "is not in easy-to-read lettering."

Looking at the marks overall, the number “2” in the cited mark is so highly stylized that consumers are less likely to recognize it as such. Rather, it is more likely to be perceived as a distinctive design element. Because of this ambiguity, consumers encountering the cited mark are more likely to remember the design comprised of the orange and red griffon shield instead of the stylized letters K2. For these reasons, we find that the design in the cited registration is the dominant element.

The Board concluded that the marks are different in appearance, sound, connotation, and commercial impression.

The Board also observed that the automobiles and auto parts are not typically purchased on impulse. That factor also weighed against a finding of likely confusion.

Balancing the relevant DuPont factors, the Board found confusion unlikely and it reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: The cited mark looks like V-2 MOTOR to me.

Text Copyright John L. Welch 2023.


At 7:31 AM, Anonymous Anonymous said...

That phrase "the normal scope of protection to which inherently distinctive marks are entitled" frequently used by the Board is utterly meaningless. Putting aside evidence of commercial strength, which of course is relevant but rarely present in ex parte refusals, the scope of protection to which an inherently distinctive mark is entitled varies greatly based on its nature - from a narrow scope of protection in the case of a highly-suggestive mark to a broad scope of protection in the case of an arbitrary or fanciful mark - so referring to the "normal" scope of protection is unhelpful.

At 10:41 AM, Anonymous Anonymous said...

TTAB is wrong. Awful.

At 3:47 PM, Anonymous Anonymous said...

I read decisions like this one and shake my head because it easily could have gone the other way. Instead of asking WYHA, TTABlog should ask WNRTD - Why Not Roll the Dice?

At 11:09 AM, Anonymous Anonymous said...

Decisions like this evidence why the Board should be forced to make all decisions citable as precedent. This is an experienced judge, so it is a real head scratcher unless there are other factors in play behind the scene. The "is not in easy-to-read lettering" is one of the more idiotic statements I have seen in a decision in a long time. How would the mark be vocalized? The Redneck RaceGirl case has nothing to do with this analysis as its apples to oranges. Next time I get an Office Action for identical composite marks I will be sure to cite this decision; and I am sure it will fail. If I was the judge, I would be super embarrassed to sign my name to this mess. SMH


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