A New Trend for the Relatedness of Goods or Services Factor?

"White Horse Auto dealership related goods or services to car washes"

A recent Trademark Trial and Appeal Board decision involving car dealerships and car washes may signal a change in how the Board will assess the relatedness of goods or services likelihood of confusion factor. White Horse Auto, LLC filed a service mark application to register the mark WHITE HORSE AUTO (in standard characters) for “automobile dealerships.” White Horse Wash, LLC opposed the registration of White Horse Auto’s application on the ground of priority and likelihood of confusion.

Not surprisingly, the Board found that the marks were virtually identical. And White Horse Auto failed to demonstrate that the WHITE HORSE phrase was diluted for automobile related goods and services. Ultimately, this case came down to whether the services at issue were sufficiently related to likely cause confusion.

The Board held that providing automobile-related services by the parties was not enough by itself to establish the services at issue were related. “A finding that the goods are similar is not based on whether a general term or overarching relationship can be found to encompass them both.” This a departure from cases the TTAB decided as early as last year. For example, in the SONIA SONI LIFE IS A RECIPE, the broad description “spices” was enough for the Board to conclude that the applicant’s goods covered the registrant’s goods. The only time the Board departed from this interpretation was when the goods or services descriptions at issue were vague or involved technical goods.

In the present case, there is nothing vague nor technical about “automobile dealerships” or “car washes,” nor is either description vague. Nevertheless, the Board looked at the real world marketplace to determine what the actual services were. And based on the similarities the Board found in the circumstances surrounding the marketing of the two marks, the Board concluded the services at issue were related. Unfortunately for White Horse Auto, its application was denied registration. But if at first you don’t succeed, it’s okay to try again.

More importantly for trademark searchers, could we be seeing a change in how the Board assesses the relatedness of the goods and services factor? This is definitely an issue to watch in 2019 as the Board decides more cases because the relatedness of goods or services factor is critical to not only conducting trademark searches but also assessing whether a likelihood of confusion exists between two marks.

Airline Entertainment Equipment Is Unrelated to Broadcasting Services

"Delta airline entertainment equipment, like P.G.A. Electronic's CARAT system, that allows broadcasting services providers to deliver content"

P.G.A. Electronic wins a rare reversal from the Trademark Trial and Appeal Board for its CARAT application. Given the surprises the Trademark Office delivers from time to time, it is possible that airline entertainment equipment could be related to television and radio broadcasting services. These goods and services could be related because they are both involved in the delivery of content to consumers. The Trademark Office has held in prior cases that when the goods or services are ingredients in or compliments to the other good or service, that is an indication of relatedness.

In In re P.G.A. Electronic, the Trademark Trial and Appeal Board decided whether airline entertainment equipment is related to television and radio broadcasting services. P.G.A. Electronic filed a request for extension of protection of an international registration for the mark CARAT (in stylized form) through the Madrid Protocol. P.G.A. Electronic filed the CARAT application in connection with airline entertainment equipment. The Trademark Office refused registration of the mark on the ground that it was likely to cause confusion with a prior registered mark CARAT for radio and television broadcasting services.

The central issue in this case was the relatedness of the goods or services because the marks were virtually identical. The only difference was the stylization of the CARAT word used by P.G.A. Electronic. When the marks at issue are identical, less similarity between the goods or services at issue is required for a likelihood of confusion to exist.

The Examining Attorney offered third-party registrations for marks that covered broadcasting services and some form of content transmission.  Because of the transmission aspect of these third-party registrations did not exclude transmitting in airplanes, the Examining Attorney argued this was evidence that the goods and services at issue in the case were related.

The Trademark Trial and Appeal Board agreed, but held that the Examining Attorney failed to prove that P.G.A. Electronic’s customers were airline passengers and not the technicians who install the CARAT equipment in the airplanes. Accordingly, the Trademark Trial and Appeal Board held that airline entertainment equipment is unrelated to radio and television broadcasting services.

Concert Speakers and Consumer Speakers are Related

"Guardian Audio concert speakers and consumer speakers"

Have you ever noticed or even pay attention to the brand name of the concert speakers? No, us either. But according to the Trademark Trial and Appeal Board, most consumers must pay attention to and could be confused by a similar trademark used on a concert speakers and consumer speakers. The astonishing aspect of this case was the level of detail the applicant – David Mottinger – included in its identification of goods description in order to avoid the issue the Trademark Office had with his application.

In In re David Mottinger the Trademark Trial and Appeal Board had to decide whether GUARDIAN AUDIO for – take a breath – “audio equipment for use in commercial entertainment systems for use in large public venues, namely, amplifiers, speakers, receivers; all of the foregoing sold only to sound contractors for commercial installation, and to sound production companies, and none of which are targeted to or designed for use by the general consuming public” was confusingly similar to EGUARDIAN for, among other goods, the broadly worded audio products that could include consumer speakers and concert speakers.

This case was no exception to the tried and true statement made by the Trademark Trial and Appeal Board that the relatedness of goods determination must be made based on the descriptions contained in the application and registration at issue. With respect to Mr. Mottinger’s GUARDIAN AUDIO application, there is not much more detail he could have included to avoid the issue the Trademark Office had with his application. But because the EGUARDIAN registration broadly described its audio goods, the Board found there was overlap; thus, the relatedness factor favored a likelihood of confusion.

Moreover, it is high time the Trademark Trial and Appeal Board stop with this policy of only considering what is described in the application and registration. In this case, Acceptto Corporation – the owner of the EGUARDIAN registration – uses the mark only as the name of a driver. But because it only had to show use on 1 of the goods described in the then application it was able to register the mark for the entire goods description if it was willing to the risk on a fraud claim most likely because the Trademark Trial and Appeal Board has been so milk toast on fraud claims since the Bose decision. All the Board’s policy is doing is pushing more people to file partial cancellation actions, which will further clog the TTAB docket.

Trademark searchers need to pay attention to how marks are actually being used if a mark appears problematic from the search results.