TTAB Dismisses Section 2(d) Opposition to NOMAD for Barbecue Grills due to Lack of Proof of Relatedness with Electronic Goods

The Board dismissed this opposition to registration of the mark NOMAD in the form shown below, for "barbecue grills," concluding that, although the marks are "very similar," opposer failed to prove likelihood of confusion with its mark NOMAD in standard characters for a variety of goods, including power cables, battery chargers, watch bands, wallets, mouse pads, and key chains (but not for barbecue grills). Nomad Goods, Inc. v. Nomad Grill LLC, Opposition No. 91273170 (September 18, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The Goods: The Board noted that not one of opposer’s registrations identifies barbecue grills, and opposer’s CEO acknowledged that it “does not now sell barbe[c]ue grills.” But "the parties’ goods don’t have to be identical or competing for this factor to weigh in favor of a conclusion that confusion is likely."

Opposer did not argue that the goods are identical or competing, but contended that barbecue grills are related to the goods in the registrations of record. One way a party may show that non-competing goods are related is by showing that the goods are “intrinsically related.” Opposer, however, did not claim any inherent or intrinsic relationship between barbecue grills and the goods identified in its registrations (which are largely electronics-focused but include watch bands and wallets). Nor did the Board see one.

Nonetheless, consumers may still perceive the goods to be related if “the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” One way to show relatedness this way is to submit “advertisements showing that the relevant goods are advertised together … by the same manufacturer or dealer.” Another way is to show that third parties have registered, or use, the same mark for both types of goods.

Opposer did not provide evidence that any third-party uses the same mark for both barbecue grills and any of the goods listed in its registrations. However, opposer did provide two third-party registrations that identify both barbecue grills and one or more of the goods identified in Opposer’s registrations, namely, watch bands & straps, or electrical cables for use in connections, or USB cables for cellphones and wireless chargers.

This is a paltry foundation upon which to construct an argument that any of the goods in Opposer’s registrations are related to barbecue grills. We find that Opposer has not proved that barbecue grills are related to any of the goods in the five NOMAD registrations owned by Opposer that are properly of record.

Opposer also argued that barbecue grills “would be a natural expansion for Opposer,” but the Board had no difficulty rejecting this conclusory argument. "Opposer directs us to nothing other than its COO’s say-so that expanding from portable electronics chargers, connectors, and accessories would be natural. This is patently insufficient." For example, opposer points to nothing about the technology required to execute the required expansion. Moreover, the nature and purpose of barbecue grills is to cook food, a nature and purpose shared by none of opposer’s goods. And opposer’s third-party registrations "give little indication that any others have expanded in that way."

Reviewing Opposer’s meager showing, as noted above, we have no difficulty on this record finding that barbecue grills would not fall within the zone of natural expansion of an entity selling the sorts of goods reflected in Opposer’s registrations.

Strength of Opposer's Marks: Opposer emphasized how its website advertising targets people with "mobile lifestyle[s]" and its ads link its products to many kinds of outdoor activities. With regard to inherent strength, the Board found that "[i]n view of the products identified in the registrations of record and the way Opposer presents them to the public, Opposer’s NOMAD mark is suggestive."

As to commercial strength, Opposer provided no sales data, no advertising data, no market share or brand awareness data, no evidence of licensing activity, and no evidence of third-party awareness of the mark. Thus, opposer failed to prove "any significant degree of commercial strength."

To summarize our findings on the fifth and sixth factors, Opposer’s mark, which we find to be suggestive, possesses the conceptual strength of any mark registered without a required showing of acquired distinctiveness. In other words, it’s conceptually stronger than a descriptive term that acquired distinctiveness, but conceptually weaker than an arbitrary mark. However, we have found that Opposer has failed to prove any degree of commercial strength. For its part, Applicant has not shown that significant third-party registration and/or use of NOMAD in the relevant market decreases the level of strength we otherwise would attribute to Opposer’s mark.

Conclusion: The Board found that the marks are nearly identical, but the goods are unrelated, and these two factors "ordinarily are the weightiest ones." Many factors were neutral: purchaser sophistication, the strength of Opposer’s mark, the lack of evidence of actual instances of consumer confusion, Applicant’s intent, and the parties’ consent agreements with third parties. The other factors weighing in favor of opposer were the trade channels and classes of customers, which overlap "to some indeterminate degree."

If we were merely counting beans, Opposer has more factors than Applicant. But we are convinced that the goods at issue here, as set forth in the registrations of record and the application, are so far apart that, notwithstanding the near identity of the marks, consumers are unlikely to be confused.

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TTABlogger comment:  Judge Casagrande's typically down-to-earth discussion of the strength of opposer's mark and of the relatedness of the goods makes this opinion worth a read.

Text Copyright John L. Welch 2024.