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A Rare TTAB Reversal Of A Section 2(d) Refusal

One of the many grounds an Examining Attorney can cite for a refusal of a trademark application is likelihood of confusion between a proposed trademark and a mark contained either in a pending application or a prior registration. A Section 2(d) Refusal is a trademark refusal based on likelihood of confusion grounds. If dissatisfied with a refusal, an applicant can appeal the decision to the Trademark Trial and Appeal Board (“TTAB” or “Board”) of the United States Patent & Trademark Office (“USPTO”). This is an extremely common ground for refusal, however when appealed often the refusal is affirmed. In the year 2014, there was a 90% affirmance rate for refusals based on likelihood of confusion grounds. Recently, the Board issued a reversal, see In re SDI Petroleum, LLC, Serial No. 86011946 (November 30, 2015).

The applicant in In re SDI Petroleum, LLC was seeking registration of the mark DASH NEIGHBORHOOD for retail store services featuring gasoline. The Examining Attorney refused the application based on prior registrations for the marks DASH IN and D DASH & Design for retail store services featuring convenience store items and gasoline. The registered marks are owned by the same registrant. The applicant requested reconsideration and that was denied and the appeal proceeded.

A likelihood of confusion analysis will consider all relevant facts in evidence and the factors set forth in In re E.I. du Pont de Nemours & Co 476 F.2d 1357, 177 USPQ 563 (CCPA 1976). The Board first reviewed the services. The marks contained services that were in part identical. There were no restrictions in the identification of services pertaining to the channels of trade. Since the identifications were in part identical, it is presumed that the trade channels and classes of consumers are overlapping for those identical services. Therefore, trade channels and services weigh in favor of finding likelihood of confusion.

Since the services are in part considered identical, the degree of similarities between the marks will be less than required had the services not been identical. In a similarity analysis, the visual appearance, sound of the mark, meaning of the mark and general commercial impression is considered. Regarding commercial impression, the Board held that it was generally the same and would impress the notion of dashing into or around one’s neighborhood.

Applicant also argues that the term “dash” is commonly used with convenience stores and therefore it is weak. Moreover, the applicant argues that since it is commonly associated with convenience stores, consumers will be relying on other elements within the mark to distinguish the source of the marks. In support of the applicant’s argument, 17 examples of marks using the term “dash” for convenience stores from around the country were submitted into the record. Applicant’s counsel also made telephone calls to confirm that the businesses were active and that they were offering gasoline and convenience store services. A portion of this evidence included listings from yellow page entries taken from the Internet. Some of the examples were Gas n’ Dash, Cash n Dash, Fast Dash Convenience Store, Dip n Dash etc.

The Board agreed with the applicant on this point citing two cases Jack Wolfskin Ausrustung Fur Draussen GmbH & KGAA v. New Millennium Sports SLU, 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. August 19, 2015); and Juice Generation Inc. v. GS Enters LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015). See our blogs entitled, The Federal Circuit Sends A Strong Message To The TTAB, and The Second Federal Circuit Decision Weighing In On The Crowded Field Theory, for the significance of these two recent Federal Circuit decisions with regard to the “crowded field” argument. The Board stated that since the marks are weak, consumers will look to slight differences in the marks for source distinction and differences in sight and sound weighed against a finding of likelihood of confusion. Du Pont factors one and six weigh in favor of finding no likelihood of confusion. The Board reversed the affirmance and simultaneously strengthened the crowded field argument. If you encounter a situation where you are pondering similarities between marks and whether there could be a likelihood of confusion, kindly contact our office for a courtesy trademark consultation.