IP News

First TTAB Decision under Trademark Dilution Revision Act

In 7-Eleven, Inc. v. Wechsler, __ USPQ2d__, Opposition No. 91117739 (TTAB, May 15, 2007), the Trademark Trial and Appeal Board rejected 7-Eleven's likelihood of confusion claim and dismissed 7-Eleven's opposition to Lawrence Wechsler's registration of the GULPY mark for 'portable animal water dishes and animal water containers sold empty.' The Board also, in its first opinion after the Trademark Dilution Revision Act, rejected 7-Eleven's dilution claim.

7-Eleven introduced the BIG GULP trademark in 1978 in association with fountain drinks. It later introduced others into the 'Gulp' family surname of marks, including GULP, SUPER BIG GULP, DOUBLE GULP, and X-TREME GULP in conjunction with its fountain drink line of products. 7-Eleven has also expanded the 'Gulp' line of products to include CANDY GULP, GARDEN GULP, and FRUIT GULP. Sales of 7-Eleven's 'Gulp' drinks average more than $180 million per year, and it spends millions to advertise and promote these marks in movies, print, and television mediums. Wechsler's first use in commerce of the GULPY mark was in 2001 in association with a portable pet water dispenser. The GULPY pet water dispenser is sold in pet stores in almost every state and over the Internet.

In addressing 7-Eleven's dilution claim, the Board limited its analysis to the BIG GULP mark because only it had acquired the requisite fame necessary to support a dilution claim, as evidenced by, among other things, references that identify the mark 'as a symbol of American culture.' The Board also considered the congressionally mandated 'degree of recognition of the famous mark' factor. While stating that this mandated factor 'seems redundant in view of the fact that opposer must establish that its mark is famous as a prerequisite for establishing a dilution claim,' the Board nonetheless applied a sliding scale to determine the extent of dilution protection for the BIG GULP mark. The Board held that there was insufficient evidence that BIG GULP acquired such a level of extraordinary recognition relative to other famous marks and upon balancing the remaining factors held that 7-Eleven did not demonstrate that the registration of Wechsler's GULPY mark would dilute the BIG GULP trademark.

7-Eleven also lost on its likelihood of confusion claim. The Board stated that the relevant inquiry is whether Wechsler's mark would be viewed as a member of 7-Eleven's family of marks. The Board first stated that the word 'gulp' is a common word and that, when applied to fountain drinks, the commercial impression engendered by it is that 7-Eleven provides huge quantities of liquid. In contrast, the Board found GULPY to be a coined word that does not incorporate 7-Eleven's family surname and when applied to portable animal water dispensers engenders a different commercial impression, namely, 'a puppy drinking water from a bowl ' ' Because the GULPY mark is used on portable animal dishes, a distinctly different product than fountain drinks, and 7-Eleven presented no evidence that it intends to expand its product lines to include pet accessories, the Board ruled that the GULPY mark is sufficiently different from the 'Gulp' family surname and that consumers are not likely to believe that GULPY is a member of 7-Eleven's 'Gulp' family of marks.

In analyzing the other du Pont factors for likelihood of confusion, the Board concluded that while the BIG GULP mark when used in connection with fountain drinks has a very high degree of public recognition and renown, the dissimilarity 'between the parties' products and the marks under which they are sold' offsets that recognition and negates any likelihood of confusion.

Follow-Up TTAB Decision in First Niagara Case

In First Niagara Ins. Brokers, Inc. v. First Niagara Fin. Group, Inc., __ USPQ2d __, Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712, 91150237 (TTAB, June 6, 2007), the Trademark Trial and Appeal Board ('TTAB'), on remand from the Court of Appeals for the Federal Circuit, sustained three of First Niagara Insurance Brokers, Inc.'s (FN-Canada) six oppositions against First Niagara Financial Group, Inc.'s (FN-US) intent-to-use applications.

FN-Canada is a Canadian entity that adopted its mark in 1984 and has regularly used it in connection with its insurance brokerage services. FN-US is a U.S.-based company engaged in insurance, banking, leasing, and various other financial services. The earliest date upon which FN-US can rely on in support for its applications is Jan. 1, 2000. Arguing priority and likelihood of confusion, FN-Canada opposed FN-US applications for FIRST NIAGARA, FIRST NIAGARA FINANCIAL GROUP, FIRST NIAGARA ONLINE, FIRST NIAGARA BANK'S CUSTOMER CONNECTION LINE, FIRST NIAGARA E-CD, and a design form containing the phrase 'First Niagara.' In an earlier decision, the Board dismissed the six '2(d) oppositions and concluded that FN-Canada had not 'established use of its pleaded marks ' in a type of commerce regulable by Congress ' [thus] opposer could not establish its priority and could not prevail on its claim of likelihood of confusion.' On appeal, the Federal Circuit, in a significant decision, reversed the Board's decision and held that the '2(d) test employed by the Board was too strict since the test only requires a prior use in the United States. The Court further found that '[t]he record unquestionably reveals more than ample use of [opposer's] marks in the United States to satisfy the use requirements of Section 2(d).' First Niagara Ins. Brokers, Inc. v. First Niagara Fin. Group, Inc., 476 F.3d 867 (Fed. Cir. 2007).

Adopting this lenient 'use' requirement for '2(d) oppositions, the TTAB on remand did not consider FN-US's affirmative defense regarding FN-Canada's use of the marks in question, and stated that 'such use [in commerce] is not necessary to support a claim of likelihood of confusion under Section 2(d) of the Trademark Act.' With respect to priority of use, the Board first determined that FN-Canada had established the required distinctiveness of the phrase FIRST NIAGARA in connection with its insurance services, well before the earliest filing date of FN-US's intent-to-use applications. In determining likelihood of confusion, the Board held that the dominant portion of each of the parties' marks is FIRST NIAGARA and that except for one of FN-US's marks, the additional wording in the other marks is either merely descriptive or has been disclaimed. The Board found that FN-US's mark is substantially similar to FN-Canada's marks and therefore the factor of similarity of the marks lends support to FN-Canada's oppositions. The Board also found that the parties' insurance-related services are identical and thus supports FN-Canada's opposition to FN-US's use of its marks for these services; however, the Board stated that there is no evidence in the record that would support FN-Canada's opposition to the marks' use in leasing and banking services.

After balancing the relevant du Pont factors, the Board held that FN-US's use of its FIRST NIAGARA marks is likely to cause confusion 'as to the source or sponsorship of ' insurances services,' and sustained FN-Canada's opposition to these applications, but dismissed the oppositions to FN-US's applications for leasing and banking services, because FN-Canada could not establish that confusion as to source or affiliation is likely to occur with respect to these services.

Hany Rizkalla, Ph.D. is an associate in the New York office of Kenyon & Kenyon LLP. He can be reached at 212-908-6105.

First TTAB Decision under Trademark Dilution Revision Act

In 7-Eleven, Inc. v. Wechsler, __ USPQ2d__, Opposition No. 91117739 (TTAB, May 15, 2007), the Trademark Trial and Appeal Board rejected 7-Eleven's likelihood of confusion claim and dismissed 7-Eleven's opposition to Lawrence Wechsler's registration of the GULPY mark for 'portable animal water dishes and animal water containers sold empty.' The Board also, in its first opinion after the Trademark Dilution Revision Act, rejected 7-Eleven's dilution claim.

7-Eleven introduced the BIG GULP trademark in 1978 in association with fountain drinks. It later introduced others into the 'Gulp' family surname of marks, including GULP, SUPER BIG GULP, DOUBLE GULP, and X-TREME GULP in conjunction with its fountain drink line of products. 7-Eleven has also expanded the 'Gulp' line of products to include CANDY GULP, GARDEN GULP, and FRUIT GULP. Sales of 7-Eleven's 'Gulp' drinks average more than $180 million per year, and it spends millions to advertise and promote these marks in movies, print, and television mediums. Wechsler's first use in commerce of the GULPY mark was in 2001 in association with a portable pet water dispenser. The GULPY pet water dispenser is sold in pet stores in almost every state and over the Internet.

In addressing 7-Eleven's dilution claim, the Board limited its analysis to the BIG GULP mark because only it had acquired the requisite fame necessary to support a dilution claim, as evidenced by, among other things, references that identify the mark 'as a symbol of American culture.' The Board also considered the congressionally mandated 'degree of recognition of the famous mark' factor. While stating that this mandated factor 'seems redundant in view of the fact that opposer must establish that its mark is famous as a prerequisite for establishing a dilution claim,' the Board nonetheless applied a sliding scale to determine the extent of dilution protection for the BIG GULP mark. The Board held that there was insufficient evidence that BIG GULP acquired such a level of extraordinary recognition relative to other famous marks and upon balancing the remaining factors held that 7-Eleven did not demonstrate that the registration of Wechsler's GULPY mark would dilute the BIG GULP trademark.

7-Eleven also lost on its likelihood of confusion claim. The Board stated that the relevant inquiry is whether Wechsler's mark would be viewed as a member of 7-Eleven's family of marks. The Board first stated that the word 'gulp' is a common word and that, when applied to fountain drinks, the commercial impression engendered by it is that 7-Eleven provides huge quantities of liquid. In contrast, the Board found GULPY to be a coined word that does not incorporate 7-Eleven's family surname and when applied to portable animal water dispensers engenders a different commercial impression, namely, 'a puppy drinking water from a bowl ' ' Because the GULPY mark is used on portable animal dishes, a distinctly different product than fountain drinks, and 7-Eleven presented no evidence that it intends to expand its product lines to include pet accessories, the Board ruled that the GULPY mark is sufficiently different from the 'Gulp' family surname and that consumers are not likely to believe that GULPY is a member of 7-Eleven's 'Gulp' family of marks.

In analyzing the other du Pont factors for likelihood of confusion, the Board concluded that while the BIG GULP mark when used in connection with fountain drinks has a very high degree of public recognition and renown, the dissimilarity 'between the parties' products and the marks under which they are sold' offsets that recognition and negates any likelihood of confusion.

Follow-Up TTAB Decision in First Niagara Case

In First Niagara Ins. Brokers, Inc. v. First Niagara Fin. Group, Inc., __ USPQ2d __, Opposition Nos. 91122072, 91122224, 91122193, 91122450, 91122712, 91150237 (TTAB, June 6, 2007), the Trademark Trial and Appeal Board ('TTAB'), on remand from the Court of Appeals for the Federal Circuit, sustained three of First Niagara Insurance Brokers, Inc.'s (FN-Canada) six oppositions against First Niagara Financial Group, Inc.'s (FN-US) intent-to-use applications.

FN-Canada is a Canadian entity that adopted its mark in 1984 and has regularly used it in connection with its insurance brokerage services. FN-US is a U.S.-based company engaged in insurance, banking, leasing, and various other financial services. The earliest date upon which FN-US can rely on in support for its applications is Jan. 1, 2000. Arguing priority and likelihood of confusion, FN-Canada opposed FN-US applications for FIRST NIAGARA, FIRST NIAGARA FINANCIAL GROUP, FIRST NIAGARA ONLINE, FIRST NIAGARA BANK'S CUSTOMER CONNECTION LINE, FIRST NIAGARA E-CD, and a design form containing the phrase 'First Niagara.' In an earlier decision, the Board dismissed the six '2(d) oppositions and concluded that FN-Canada had not 'established use of its pleaded marks ' in a type of commerce regulable by Congress ' [thus] opposer could not establish its priority and could not prevail on its claim of likelihood of confusion.' On appeal, the Federal Circuit, in a significant decision, reversed the Board's decision and held that the '2(d) test employed by the Board was too strict since the test only requires a prior use in the United States. The Court further found that '[t]he record unquestionably reveals more than ample use of [opposer's] marks in the United States to satisfy the use requirements of Section 2(d).' First Niagara Ins. Brokers, Inc. v. First Niagara Fin. Group, Inc ., 476 F.3d 867 (Fed. Cir. 2007).

Adopting this lenient 'use' requirement for '2(d) oppositions, the TTAB on remand did not consider FN-US's affirmative defense regarding FN-Canada's use of the marks in question, and stated that 'such use [in commerce] is not necessary to support a claim of likelihood of confusion under Section 2(d) of the Trademark Act.' With respect to priority of use, the Board first determined that FN-Canada had established the required distinctiveness of the phrase FIRST NIAGARA in connection with its insurance services, well before the earliest filing date of FN-US's intent-to-use applications. In determining likelihood of confusion, the Board held that the dominant portion of each of the parties' marks is FIRST NIAGARA and that except for one of FN-US's marks, the additional wording in the other marks is either merely descriptive or has been disclaimed. The Board found that FN-US's mark is substantially similar to FN-Canada's marks and therefore the factor of similarity of the marks lends support to FN-Canada's oppositions. The Board also found that the parties' insurance-related services are identical and thus supports FN-Canada's opposition to FN-US's use of its marks for these services; however, the Board stated that there is no evidence in the record that would support FN-Canada's opposition to the marks' use in leasing and banking services.

After balancing the relevant du Pont factors, the Board held that FN-US's use of its FIRST NIAGARA marks is likely to cause confusion 'as to the source or sponsorship of ' insurances services,' and sustained FN-Canada's opposition to these applications, but dismissed the oppositions to FN-US's applications for leasing and banking services, because FN-Canada could not establish that confusion as to source or affiliation is likely to occur with respect to these services.

Hany Rizkalla, Ph.D. is an associate in the New York office of Kenyon & Kenyon LLP. He can be reached at 212-908-6105.