At the end of April, the USPTO's (United States Patent and Trademark Office) Trademark Trial and Appeal Board (TTAB) issued what might on its face be an unexpected decision.
In Omega S.A. v. Alliant Techsystems, Inc., Opposition Nos. 91173785 and 91174067 (April 29, 2015) [not precedential], the board dismissed watchmaker Omega S.A.'s oppositions to Alliant Techsystems' application to register a stylized version of Omega and Omega Elite, both with the initial Greek letter Ω as opposed to the Roman capital O, for protective clothing and bags for technical gear.
The board found that Alliant's applied-for marks were not likely to cause confusion with the previously used marks Omega and the Greek letter Ω, for clothing, watches, timing equipment, and sports accessories, and the registered marks Omega and variations thereof for watches and timing equipment.
This comes as something of a surprise — especially because the board acknowledged that the mark at issue was famous for watches, noting that Omega S.A. had used its mark for over 100 years, could demonstrate significant sales volumes, had extensively advertised the Omega mark, had received widespread unsolicited media attention and had successfully associated its brand with major sports events and celebrities. Moreover, unsurprisingly, the board found that the applicant's stylized Omega mark was similar to the opposer's own, since both began with the Greek letter Ω. The board also felt that Alliant's applied for Omega Elite mark was more similar than not to Omega S.A.'s marks, because the word Elite was laudatory and descriptive and therefore deserving of less weight in the likelihood of confusion analysis.
In short, the first of the factors in the widely cited DuPont case that has historically been the framework for determining likelihood of confusion weighed in favor of the opposer. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In its defense, however, Alliant submitted a number of third-party registrations for marks comprising or containing the word omega or the Greek letter Ω, as well as Internet printouts displaying use of such marks. Several of the third-party marks the board deemed particularly interesting; although the applicant provided no evidence as to how much any of these marks were actually used, the board felt confident that "the public may have been exposed to offers for sale of or advertisements for OMEGA-branded goods which are similar or at least related to Applicant's goods." The board felt that this evidence of third-party use, given its stated limitations, slightly favored Alliant.
The opposer did try to introduce evidence of its own use of Omega in connection with clothing, sports accessories, and other goods besides watches. It pointed to promotional items such as Omega-branded life preservers and starting guns. But there was no proof that these items qualified as goods in trade. And the board seemed unconvinced that the opposer's goods were related to the applicant's. It noted that starting guns were not weapons and therefore were unrelated to the applicant's tactical gear; likewise, Omega S.A.'s "timekeeping services," although sometimes provided for events that include guns — for example, for biathlons — those, too, were unrelated to the applicant's goods.
Neither did the board see evidence that the opposer sold these goods or made any use of Omega with them prior to the applicant's filing date. So this evidence did not establish "technical trademark use," nor any use prior to Alliant's filing dates.
Next, the board turned to the issue of whether the parties were likely to continue selling through the same sales channels and to the same classes of the purchasers. Alliant claimed that it offered its goods via catalog sales, targeting military, law enforcement, and other types of customers seeking tactical gear. Omega's branded watches, on the other hand, are sold through its own retail stores, as well as in authorized dealers and boutiques — at prices from $3,000 upward.
Interestingly, neither the opposed applications nor the pleaded registrations describe any limitations as to channels of trade or classes of consumers, but the board asserted that this lack of a limitation only meant that the parties' goods are presumed to travel in all normal channels to all prospective purchasers for the relevant goods.
On the strength of this assertion, the board held that even though some consumers of the applicant's tactical goods might purchase one of the opposer's high-end watches, that possibility in itself does not provide a basis for finding that the parties' likelihood of continuing to use their own specific channels of trade and marketing to their own classes of purchasers meant that these audiences of consumers would overlap.
As the board saw it, just because every consumer is a potential customer for Omega's watches, that does not necessarily mean that a purchaser of both parties' products would think they emanated from the same source. Otherwise, this factor would weigh in the opposer's favor in every Section 2(d) dispute. Instead, the board held that in view of the lack of evidence of a relationship between the opposer's and the applicant's goods, the lack of similarity in the parties' respective channels of trade, and the different classes of purchasers to whom each party marketed its products, these factors weighed heavily against a finding of likely confusion.
Finally, the board accepted the applicant's argument that its goods would be purchased with care because they are used to protect people's lives. The board felt that this factor slightly favored the applicant in countering a claim of likelihood of confusion. Balancing the relevant du Pont factors, and despite the fame of the opposer's mark, the board found confusion unlikely.
Omega v. Alliant Techsystems presented other claims that bear analysis. For instance, while its applications were pending, Alliant filed a motion to delete many of its identified goods from that application and consented to an entry of judgment against it as to trademarking those goods. The board granted the motion. However, the applicant's admitted non-use on some of the goods, the board observed, was not a ground for deeming its applications void ab initio in their entireties. To support its conclusion, the board noted that prior to its filing date, the applicant used its marks for pouches for tactical gear, which the board held were substantively the same as the bags for tactical gear and tactical equipment of the application, and for armor-bearing vests, which are protective clothing. Thus, the board dismissed the opposer's non-use and abandonment claims.
Omega S.A. also claimed in its opposition that Alliant had committed fraud on the USPTO when it filed its application, because it later admitted that it did not use its marks on some of the identified goods prior to filing its use-based applications. The watchmaker based this claim on the fact that the applicant delayed in correcting its applications until after Omega had opposed them, and said delay established the applicant's deceptive intent.
The TTAB denied this claim, primarily because there was no evidence, let alone the required clear and convincing evidence, that the applicant intended to deceive the USPTO when it filed its application. The fact that the applicant should have known it was not using its marks on some of the goods did not, according to the board, establish fraud. In its defense, Alliant admitted its error during discovery and then made its motions to amend. Even though the deletion occurred seven years after the mark was applied for, the Board felt that it did not constitute evidence of an intent to deceive the USPTO and dismissed Omega's claim of fraud.
Omega S.A.'s loss in this case raises provocative questions. First of these is whether the board's holding ignores existing case law that an applicant may not limit the identification of goods by means of extrinsic evidence of actual usage. Second is whether the board was right in dismissing the fact that the applicant took seven years to request deletion of the non-used goods as having no bearing on whether the applicant committed fraud on the PTO when it filed its application based on use. Seven years is a long time. Would Alliant ever have deleted those goods, had it not faced Omega's opposition?
A final question is whether this case does really rise and fall on the relatedness of the parties' goods — and whether it should. The concept of trademark dilution was supposed to do away with the relatedness-of-goods argument — for example, that anyone using the trademark Coca-Cola for any good could be guilty of dilution. Yet in Omega v. Alliant Techsystems, the board set such assumptions aside, and spent a great deal of time and effort discussing the differences between the parties' goods. Does this suggest some new feelings towards dilution? Is there some qualitative difference between Coca-Cola and an Omega watch that the TTAB fathoms but that escapes us? Or is this non-precedential decision just a one-off?
Time will tell. Pun intended.
Originally published on InsideCounsel.com.
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