Precedential No. 28: TRIPLEYE Not Confusable With 3RD EYE for Optical Monitoring Software and Services, Says TTAB

In a rather straightforward, yet precedential decision, the Board dismissed a Section 2(d) opposition to registration of the mark TRIPLEYE for optical monitoring software and equipment and related technical services, finding confusion unlikely with the registered mark 3RD EYE for vehicle surveillance and detection systems and related hardware, software and software-based services. The Board found the differences in sound, appearance, connotation, and commercial impression between the marks to be the most important factor in reaching its conclusion. The Heil Co. v. Tripleye GmbH, Opposition No. 91277359 (November 20, 2024) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

Evidentiary Rulings: Opposer Heil was knocked back on its heels by two evidentiary rulings. First, the Board tossed out its claim to a "family of marks" because Heil did not make that allegation in its notice of opposition and the issue was not tried by implied consent. Second, the Board upheld Applicant Tripleye's objection to Heil's last-minute attempt to change the sales figures that it provided during discovery. Tripleye was dealt an early blow when the Board refused to take judicial notice that "autonomous vehicles are (or will be when they reach the market) expensive purchases," due to the vagueness of the statement and the lack of unquestionable evidence in support.

Motion to Amend: Tripleye, in an attempt to side-step the Section 2(d) claim, had filed a Rule 2.133 motion to amend its application by limiting the goods and services to use with "Level 4 or Level 5 autonomous vehicles." The Board denied the motion because the proposed amendment "does not introduce a substantially different issue for trial," since Heil's registrations are broadly worded and cover the goods and services in Tripleye's application even if so amended.

Likelihood of Confusion: Turning to the substantive issue, the likelihood of confusion, Heil argued that its mark is commercially strong but its proofs were underwhelming. Although claiming use of the mark 3RD EYE since 2004, its sales figure were limited to the 2019-2022 time period and lacked industry context. It provided evidence of a few media articles, promotion at a single trade show, and an unimpressive media presence.

We cannot place Opposer’s 3RD EYE mark on the high end of the fame/commercial strength spectrum amongst a “significant portion of the relevant U.S. consumers” in the vehicle surveillance and detection system industry. *** Perhaps on a more developed record we would find otherwise. As a result, the fifth DuPont factor is neutral.

As to the sixth DuPont factor, the Board found - based on 26 third party registrations - that the word EYE "is a common element of marks for “cameras.” Third-party use evidence likewise showed such use of the word EYE, but none of the marks were similar to Heil's mark overall.

Under the sixth DuPont factor, the evidence of third-party marks reflects weakness of the word EYE but not of Opposer’s mark as a whole. However, consumers apparently distinguish among coexisting EYE-formative marks based on other elements, and EYE is the only shared component of Opposer’s and Applicant’s marks. The sixth DuPont factor thus weighs against likely confusion.

Most significantly, the Board found the mark TRIPLEYE and 3RD EYE to be "different enough" in sound, appearance, connotation, and commercial impression to avoid a likelihood of confusion.

[T]he marks TRIPLEYE and 3RD EYE convey different connotations and commercial impressions. TRIPLEYE has a meaning of “three eyes,” suggesting three cameras in this context, whereas 3RD EYE, as a phrase, has a specific understood meaning and connotation and will be viewed as a unitary mark, calling to mind an additional eye that provides extra-ordinary perception, including for example the “mind’s eye” or “inner eye.” Opposer asks us to take too far a leap by ignoring the understood meaning of the phrase “third eye.” These differing connotations and commercial impressions are consistent with distinctions between the parties’ goods, as indicated by the record.

The goods in the opposed application and in Heil's registrations are in-part identical (e.g., "cameras"), and those goods presumably travel through the same trade channels to the same classes of consumers. The recited services are closely related: "Applicant’s Class 42 services cover the design of software that performs the identical purpose or function of Opposer’s software (i.e., controlling and monitoring vehicles). Thus, consumers can seek out Applicant’s services, or purchase Opposer’s software, to accomplish the same purpose." These services are offered to "many of the same industries as Opposer, such as 'mining and construction,' 'logistics,' and 'marine and ports.'" The Board acknowledged that, with regard to the involved services, consumers "will exercise at least a somewhat heightened degree of consumer care."

In conclusion, the Board found that, as to Thirdeye's goods, the dissimilarity of the marks, together with the weakness of the weakness of the only shared element, the word EYE, outweighed the other DuPont factors. As to the services, those findings, along with "the elevated degree of care in making purchasing decisions under the fourth Dupont factor," outweighed the other factors.

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TTABlogger comment: A will written run-through of the DuPont factors

Text Copyright John L. Welch 2024.