Swatch, S.A. v. Beehive Wholesale, L.L.C.
888 F. Supp. 2d 738
E.D. Va.2012Background
- Swatch opposes Beehive's SWAP trademark application before TTAB; TTAB ruled in Beehive's favor on all counts adverse to Swatch.
- Swatch owns SWATCH registrations for watches, clocks, and related goods; Beehive sells SWAP-marked interchangeable watch faces/bands.
- The Clock-Face Variant of SWAP is at issue as additional evidence of infringement.
- Swatch filed this §1071(b) civil action seeking review on a closed TTAB record with new evidence; Beehive seeks to admit TTAB record subject to objections.
- The court analyzes likelihood of confusion de novo for new evidence, while reviewing TTAB's fact findings for substantial evidence; overall result affirms TTAB on confusion/dilution and holds SWAP registerable as a suggestive mark.
- The TTAB found SWATCH famous but limited evidence, while the court, after de novo review, finds SWATCH conceptually and commercially strong and SWAP dissimilar in sight/meaning; ultimate conclusion: no confusion, dilution denied, SWAP registerable as suggestive.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion between SWAP and SWATCH | Swatch argues strong mark, similar overall appearance and consumer likelihood of confusion. | Beehive maintains dissimilar marks and usage; differences in sight/meaning reduce confusion. | No likelihood of confusion; factors weigh against Swatch. |
| Dilution by blurring of Swatch’s mark | SWAP harms Swatch’s distinctiveness through association. | Minimal similarity and lack of association; no dilution. | Dilution claim rejected; no likelihood of dilution. |
| Registerability of SWAP as a mark (descriptive vs. suggestive) | SWAP is descriptive of interchangeable components; lacks suggestive strength. | TTAB found SWAP suggestive, registrable; new evidence does not negate. | SWAP is registerable as a suggestive mark. |
| Admissibility and weight of TTAB record and new evidence | TTAB record and surveys should be considered; new evidence could alter findings. | Record admissible under 15 U.S.C. §1071; some evidence limited in weight. | TTAB record admissible with weight adjustments for objections; new evidence reviewed de novo where appropriate. |
Key Cases Cited
- Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984) (nine-factor likelihood-of-confusion framework; nonexclusive factors)
- Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012) (nine-factor test for confusion; not exclusive or mandatory)
- CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263 (4th Cir. 2006) (fame and strength considerations; key for commercial strength analysis)
- George & Co., LLC v. Imagination Entertainment Ltd., 575 F.3d 383 (4th Cir. 2009) (applies secondary meaning factors to commercial strength; related analysis)
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) (likelihood of confusion standard and consumer confusion considerations)
- Venetian Casino Resort, LLC v. Venetiangold.Com, 380 F.Supp.2d 737 (E.D. Va. 2005) (illustrative of dilution considerations and fame)