Lead Opinion
Shell Oil Company appeals the decision of the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, refusing to register the service mark RIGHT-A-WAY and arrow design for “service station oil and lubrication change services”.
Background
On September 19, 1988 Shell Oil filed application Serial No. 73/753,045 to register the following service mark:
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Shell claimed use since August 5, 1988.
The examiner refused registration based on section 2(d) of the Lanham Trademark Act,
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The registrant is R.A. Industries, Inc. First use in commerce on March 11, 1982 is stated in the registration.
The Board affirmed the refusal of registration, holding that there was likelihood of confusion in view of the substantial identity of the marks and their use in connection with automotive-related services.
Discussion
Likelihood of confusion under section 2(d) is determined as a matter of law, on the factual record. Each case of likelihood of confusion is decided upon the particular facts of the case, In re E.I. Du Pont de Nemours & Co.,
In reviewing the question of likelihood of confusion between the two marks at bar, we have given particular attention to the following factors:
1.The Marks
The marks are considered in their entire-ties, words and design. The Board placed weight on the identity of the words RIGHT-A-WAY, and the presence of an arrow design in both marks. Shell points out that there are differences in the script, as well as in the form of the arrow design. Shell argues that the arrow is the dominant feature to be compared, stating that the words “right-a-way” are descriptive or highly suggestive of the services with which they are used.
Without doubt the word portions of the two marks are identical, have the same connotation, and give the same commercial impression. The identity of words, connotation, and commercial impression weighs heavily against the applicant. See In re Martin’s Famous Pastry Shoppe, Inc.,
2. The Disclaimer
Shell argues that the words are common dictionary words, and that since Shell filed a disclaimer of the words “Right-AWay”, the only issue of registration relates to the script and the arrow design. The Board correctly held that the filing of a disclaimer with the Patent and Trademark Office does not remove the disclaimed matter from the purview of determination of likelihood of confusion. See In re National Data Corp.,
The marks must be considered in the way in which they are perceived by the relevant public. Shell’s argument that the only consideration is the “design form” of the words “Righb-A-Way”, omitting the words “right-away” because they were disclaimed, was correctly rejected by the Board.
3. The Services
The registrant’s services were described in the registration document as “distributorship services in the field of automotive parts”, and were found by the Board to include “buying
R.A. Industries provides management services for all its subsidiaries including accounting, data processing and planning services to the distributors and retail stores. In every instance the mark is controlled and owned by R.A. Industries.3
The services with which the marks are associated are not identical. The degree of “relatedness” must be viewed in the context of all the factors, in determining whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship. It is relevant to consider the degree of overlap of consumers exposed to the respective services, for as discussed in Philip Morris Inc. v. K2 Corp.,
4. Extent of Consumer Confusion
The Board described potential consumers of Shell’s oil change and lubrication services as the broad class of automobile owners. Shell referred to its twelve thousand automotive service stations that would use the mark RIGHT-A-WAY. Indeed, Shell does not dispute the Board’s finding that substantially all of the registrant’s customers are prospective consumers of Shell’s services.
Shell argues thát the number of consumers of the registrant’s services is small, and thus that confusion would be de minim-is. However, the rights flowing from federal registration do not vary with the size of the registrant; a small business that meets the statutory requirement of providing its services “in commerce”, 15 U.S.C. § 1051(a)(1), is not rationed, because it is small, in the rights secured by the Lanham Act. See Giant Food, Inc. v. Nation’s Foodservice, Inc.,
Even if the overlap between consumers of registrant’s RIGHT-A-WAY services and Shell’s RIGHT-A-WAY services were small in relation to the total number of Shell customers, it is not de minimis in relation to the registrant’s customers. A newcomer does not gain the right to register a substantially identical mark
The term “reverse confusion” has been used to describe the situation where a significantly larger or prominent newcomer “saturates the market” with a trademark that is confusingly similar to that of a smaller, senior registrant for related goods or services. Sands, Taylor & Wood Co. v. Quaker Oats Co.,
The avoidance of confusion between users of disparate size is not a new concept; however, the weighing of the relevant factors must take into account the confusion that may flow from extensive promotion of a similar or identical mark by a junior user. See DeCosta v. Viacom International Inc.,
5. Sophistication of Purchasers
The discrimination and degree of care by users of the respective services must be considered, along with other relevant factors, and given appropriate weight.
Shell argues that the registrant’s consumers are informed and deliberate users of the registrant’s automotive parts distribution services, who would be unlikely to be confused by Shell’s use of substantially the same mark for automotive oil change and lubrication services. The Commissioner responds that the same standard of care would not be expected to be exercised by purchasers of automotive parts from a distributor, compared with their purchase of routine oil change and lubrication services. In Fuji Photo Film Co. v. Shinohara Shoji K.K.,
The disparity in purchaser sophistication and in the standard of purchasing care distinguish the case at bar from those wherein the primary consumers of both purveyors’ services are professional purchasers, as in Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc.,
Conclusion
Considering all the factors, and for the reasons we have discussed, we conclude that there is a likelihood of confusion between the registrant’s mark RIGHT-A-WAY and design and Shell’s mark RIGHT-AWAY and design. Doubt is resolved against the newcomer, In re Hyper Shoppes (Ohio), Inc.,
At the hearing Shell argued that doubt should be resolved by approving the application for registration, and publishing the mark for opposition. The purpose of trademark examination is for the Office to determine the issue of likelihood of confusion in ex parte proceedings with the applicant. The opposition procedure is intended to remedy oversight or error, not to substitute for the examination process. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 20.01[1] (3d ed. 1992) (opposition proceedings provide “a backstop to purely ex parte examination of trademark applications”).
The Board’s decision is
AFFIRMED.
Notes
. Ex parte Shell Oil Co., Serial No. 73/753,045 (Trademark Trial & Appeal Board, Dec. 16, 1991).
. 15 U.S.C. § 1052(d). "No trademark ... shall be refused registration on the principal register on account of its nature unless it—
(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office ... as to be likely ... to cause confusion, or to cause mistake, or to deceive.”
. Although we do not rely on it, the record also contains declarations under sections 8 and 15 of the Lanham Act, with a picture of the mark RIGHT-A-WAY on a delivery vehicle, hat, and jacket, and advertising material describing use of the mark at the retail level, including vehicle decals, uniforms, caps, door stickers, store valences, a lighted sign with the store name, and clocks. Although the dissent dismisses these specimens as planned future marketing, the Lanham Act requires that the specimens show “current use of the mark”, 15 U.S.C. § 1058(a) [section 8], and that the affidavit show that the registered mark -"is still in use in'Commerce", 15 U.S.C. § 1065 [section 15]. See Standard Havens Products, Inc. v. Cencor Industries, Inc.,
. Although Shell argues that its use of RIGHT-AWAY would be in association with other Shell trademarks, the proposed registration is not so limited. .Registrability is determined based on the description in the application, and restric
Dissenting Opinion
dissenting.
Because I believe that the Board’s conclusion of likelihood of confusion was erroneous on the evidentiary record before it, I respectfully dissent. I would remand the case for new findings, based on record evidence instead of rank speculation, or reverse because there is no likelihood of confusion under the marketing circumstances established by the prior registration, the application-in-suit, and the other documentary evidence of record. Evidence subsequently submitted only to us may not properly be taken into account.
I.
The Board’s finding that “[cjustomers for registrant’s services would include, among others, service stations, automotive repair and body shops, as well as retailers of automotive parts,” In re Shell Oil Co., Serial No. 73/753,045, slip op. at 8 (TTAB Dec. 16,1991) (emphasis added), was unsupported by any evidence of record. Although the Board may draw reasonable inferences from the evidence, it may not simply assume whom a registrant’s customer base “would include.” Because there was no record evidence identifying registrant’s customers, the Board can only have based its finding entirely on its own speculative assumptions. Even if these assumptions coincidentally are correct, a finding based only on assumptions is, by definition, clearly erroneous.
Inasmuch as the Board’s conclusion was based substantially on this clearly erroneous finding, it, too, must be erroneous. The parties’ services are different and non-competing, with different channels of trade. Therefore, if, instead, the finding about customers had been that registrant sold and advertised only to jobbers (who, in turn, sold to retailers), the customers of registrant who might
Because assumptions can skew the legal analysis, the law is well settled that the Board’s legal conclusion of likelihood of confusion must be based on more than just theoretical possibilities and speculation. EDS,
II.
Even assuming, arguendo, that the Board’s speculative finding as to registrant’s customer base was correct, in my view even unsophisticated motorists would not be confused. While Shell’s application for its RIGHT-A-WAY AND DESIGN mark originally defined the services used in connection with that mark merely as “Lubrication Oil Services,” see Appendix for Appellant at 77, the amended application limits the mark’s use to “Service Station Oil and Lubrication Change Services.” Id. at 83 (emphasis added). It is common knowledge, indisputable, and verifiable — and hence subject to our judicial notice — that all Shell service stations have signs bearing the Pecten design. It follows, therefore, that Shell’s oil change and lubrication services always have been and, per the application, always will be offered at its stations and hence in view of Shell’s famous Pecten design and the name “Shell.” Thus, it is not likely that any motorist would be confused as to the source or sponsorship of these services. Even those very few motorists who were aware of registrant’s services and service mark would intuitively know that oil change and lubrication services advertised by the mark at Shell stations are sponsored by Shell and Shell only. Therefore, the Board’s conclusion that purchasers of registrant’s services would likely be confused upon coming to Shell stations is fanciful and contrary to common sense. It ignores the realities, well known to the motoring public, including registrant’s customers, that no oil company offers oil change or lube (or other such) services sponsored by anyone else at its stations. Marketplace realities, however, are supposed to control likelihood of confusion analysis. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23.17 (3d ed. 1992).
III.
Likewise, there is no likelihood of reverse confusion because no one, registrant’s customers least of all, would think that Shell would distribute automotive parts to retail automotive parts stores, auto repair shops, body shops, or, indeed, non-Shell service stations. For Shell to do so would be to go into business against itself, because all of those entities compete with Shell’s auto repair bays. Nor, for the very same reason, would Shell own a subsidiary, or be owned by a parent company, that did so. Thus, registrant’s customers, even if unsophisticated or employing lesser care, would not likely believe that Shell and registrant were either related or owned in common by another company. Gas station patrons, including registrant’s customers, understand that major oil
CONCLUSION
In my view, at the very least this case should be remanded to the Board for a proper finding of the facts by reopening the record to consider documents such as those offered on motion to our court but not previously to the Board. Better yet, our court should simply reverse, in view of how the realities of the relevant marketplace make confusion of the marks for these dissimilar services decidedly unlikely. In my view, the potential number of relevant customers — customers of both companies — is minuscule. According to Shell’s brief, they consist entirely of sophisticated buyers for jobbers. The services, moreover, are neither closely related nor competing and use different channels of trade. Yet the Board minimized these factors, established by the documentary evidence, and ignored realities in the relevant marketplace while indulging in far-ranging and implausible speculation about registrant’s customers and their perceptions. This we should not condone. Only by a reversal or remand can we honor the core command of In re E.I. DuPont DeNemours & Co.,
. Some of the new documents offered our court on motion so indicated, although there was also a contrary indication, which is perhaps explainable (as Shell suggested) as post-decision marketing — quite different from marketing at the time of this application. Unfortunately, neither category of this evidence was before the Board.