*1 In re OIL COMPANY. SHELL
No. 92-1211. Appeals, Court of
United States Circuit.
Federal
April 1993. Denied;
Rehearing Suggestion for
Rehearing In Banc Declined
July *2 Ward, Ward,
Thomas Grow, J. Lazarus & DC, Washington, argued, appellant. With him on the brief was T. John Lanahan. Also on the Kimbley Muller, brief was L. Co., Houston, TX, Shell Oil of counsel. Drost, Sol., Albín F. Deputy Office of the Solicitor, VA, of Arlington, argued, for appel- lee. With him on the brief was Fred E. MeKelvey, Sol. Of counsel Nancy were C. Slutter, Dewhirst, John W. Lee E. Barrett and Richard E. Schafer. NEWMAN, MICHEL,
Before PLAGER, Judges. Circuit NEWMAN, PAULINE Judge. Circuit Company appeals Shell Oil the decision of Trial Appeal Trademark Board of the United States Patent and Trademark Office, refusing register the service mark design RIGHT-A-WAY and arrow for “ser- vice station oil and lubrication servic- es”.1
Background September On ap- Shell Oil filed plication 73/753,045 Serial No. register following service mark: August Shell claimed use since registration The examiner refused based 2(d) on section of the Lanham Trademark Act,2 citing registration January 1984 of the service mark RIGHT-A-WAY design “distributorship arrow servic- parts”: es the field of automotive 73/753,045 parte 1. Ex Shell Oil Serial No. (Trademark Board, Appeal Trial & (d) Dec. comprises Consists of or a mark which so 1991). registered resembles mark in the Patent and likely Trademark Office ... as to be ... to cause 1052(d). § "No trademark ... shall 2. 15 U.S.C. confusion, mistake, or to cause or to deceive.” registration principal register be refused on account of its nature unless it— *3 Industries, descriptive highly sug- “right-a-way” are Inc. First R.A. The is they are gestive of the services with which 1982 is stated on March use in commerce used. registration. in the registra- of affirmed the refusal portions
The Board of the Without doubt word of tion, identical, there was likelihood holding that the same con- marks are have two identity the substantial notation, in view of im- give confusion the same commercial words, connotation, in with their use connection identity of the marks and pression. The heavily services. impression weighs automotive-related and commercial against applicant. In re Martin’s See Discussion Inc., Pastry Shoppe, F.2d Famous (Fed.Cir. USPQ 1289-90 of confusion under sec Likelihood 1984). agree the Board that We with 2(d) law, on determined as matter tion is marks, dominate these and that their words Each case of likelihood of the factual record. script design in do not differences arrow upon particular facts confusion is decided identity when diminish their substantial case, E.I. Du de Nemours of the In re Pont viewed as a whole. 1357, 1361-62, USPQ 476 F.2d & (CCPA 1973), recognizing that the 2. The Disclaimer evidentiary may play more or factors various any particular in weighty roles determi less argues that the words are com Shell Ricci, v. E.T.F. En nation. Nina S.A.R.L. words, dictionary and that mon since Shell Inc., 1070, 1073, 12 terprises, “Right-A of the words filed disclaimer (Fed.Cir.1989). ap On Way”, only registration relates to issue of peal to this court the Board’s conclusion is script design. and the arrow The Board ques as to the ultimate given de novo review correctly filing a disclaimer held that the confusion, the factual of likelihood of tion with the Patent and Trademark Office does premised findings on which this conclusion is not remove the disclaimed matter from the Specialty for clear error. are reviewed likelihood of con purview of determination of Distributors, Brands, Inc. v. Bean Corp., In re National Data fusion. See Coffee 1056, 1058-59, (Fed.Cir.1984). (Fed.Cir.1985) (rejecting the “tactical strate filing, in gy” of disclaimer determination reviewing question of likeli confusion). likelihood of the two marks at hood of confusion between way in the The marks must be considered bar, given particular attention to the we have they perceived by the relevant in which are following factors: only argument that the con- public. Shell’s “design is the form” of the words sideration 1.The Marks omitting “right-a- “Righb-A-Way”, the words are considered in their entire- The marks disclaimed, way” they were was cor- because ties, design. placed The Board words and rectly rejected by the Board. identity weight of the words RIGHT- A-WAY, arrow de- presence and the of an Services points out that sign both marks. Shell script, registrant’s services were described are differences in the as well as there “distributorship design. registration ar- document as in the form of the arrow Shell parts”, in the field of automotive gues that the is the dominant feature arrow “buying stating found the Board to include compared, the words were be manufacturer, parts automotive from 4. Extent of Consumer Confusion distributing parts then on a potential The Board described consumers who, turn, wholesale basis to retailers sell change of Shell’s oil and lubrication services parts at retail to the ultimate consumer.” as the broad class of automobile owners. Board held that the automo- Shell referred to its twelve thousand automo- parts distributorship tive services and Shell’s tive service stations that would use the mark station oil and lubrication service ser- Indeed, RIGHT-A-WAY. Shell does not related, perceived vices were would be so dispute finding the Board’s argues consumers. all appeal Shell of the prospec- customers are respective tive consumers of accompanying services and Shell’s services. different, channels of trade are such that argues thát the number of con *4 there would not be a likelihood of confusion registrant’s small, sumers of the services is as to the source these of services. Shell and thus that confusion would be de minim- registrant’s that states the services are However, is. rights flowing the from federal exclusively “jobbers”. known to This is nei- registration vary do not with the size of the dispositive supported by ther nor the record. registrant; a small business that meets the Indeed, registrant’s the record before the statutory requirement providing of its servic Patent and Trademark Office included an commerce”, “in 1051(a)(1), es § 15 U.S.C. is stating Amendment that rationed, small, not because rights it is in the secured by the Lanham Act. See Giant provides R.A. management Industries ser- Food, Foodservice, Inc., Inc. v. Nation’s 710 vices for all including its subsidiaries ac- 1565, 1568, 218 (Fed.Cir. USPQ 390, 393 counting, processing data and planning 1983) (“15 1057(b) § U.S.C. pre creates a services to the distributors and retail sumption the has the exclu every stores. instance the mark con- is right sive to use its throughout mark the by trolled and owned R.A. Industries.3 States”); United' In re Appetito Provisions with which USPQ2d 1553, (Trademark services the marks 1554 n. 4 Bd.1987) (the are associated are identical. Trial degree Appeal not & Lanham Act registrant prima of “relatedness” must be in “accords a viewed con facie the exclusive rights factors, registered in of all in the determining goods text the mark the wheth or recited in registration the sufficiently the services are er related that a throughout the United regardless States of reasonable consumer would be as to confused use.”). its extent of actual sponsorship. or It source is relevant to con degree overlap the sider of of consumers if Even the overlap between con exposed respective services, to the for as registrant’s sumers of RIGHT-A-WAY ser Philip Corp., discussed Morris Inc. v. K2 vices and Shell’s RIGHT-A-WAY services (CCPA USPQ were small in relation to the total number of 1977), goods even when or services are not customers, Shell it is not de minimis related, competitive intrinsically or the use of registrant’s relation to the customers. A identical marks can assumption lead to the gain newcomer does not right register the to there is a common source. identical simply mark4 be- it, Although rely in'Commerce", we 3. do on the not also mark -"is record still in use 15 U.S.C. contains under § ucts, declarations sections and 15 of 1065 [section 15]. See Havens Prod Standard Act, picture the Lanham Inc., with a of Industries, the mark Inc. Cencor v. vehicle, hat, delivery RIGHT-A-WAY a 514 n. 2031 n. 3 jacket, advertising describing 1990) material (Fed.Cir. use of (taking judicial-notice agency of level, including the mark at the action, retail vehicle "adjudicative public since an fact” of decals, uniforms, stickers, caps, door va- store subject record and dispute). not to reasonable lences, name, lighted sign with the store Although spe- Although argues clocks. dissent dismisses 4. these that its use of RIGHT-A- planned marketing, cimens as future WAY trademarks, Lanham would be in association with other Shell requires specimens Act proposed registration show “current is not so mark”, 1058(a) 8], § .Registrability use of the 15 U.S.C. [section limited. is determined based on registered and that the show that the description application, affidavit in the and restric- that are as to the source of services exposed to the confusion persons number of cause identical, of confusion as to in relation to or likelihood may be small mark regis- between the use. The there is a relation of whether volume the newcomer’s services, by safeguarded the extent of source of the user is trant/senior consuming public, law, activities re- is and the newcomer’s as trademark given weight caused lating confusion the mark must be likelihood of from confusingly similar junior of a See In re entry appropriate user to the circumstances. Pont, Park and Inc. v. Dollar at 567 Fly, Park ’N F.2d at mark. Du (“[w]e warrant, 105 S.Ct. Fly, 469 U.S. no in the statute find 668-64, elsewhere, discarding any 83 L.Ed.2d evidence bear- (1985). only protects law not The trademark likelihood of confu- ing question of confusion as sion”) from likelihood the consumer (emphasis original). relationships, but sources to commercial Sophistication Purchasers registrant and senior user protects the also impact due use from adverse commercial degree The discrimination by a newcomer. of a similar mark respective services must care users of the considered, along with other relevant fac be has been term “reverse confusion” tors, weight. given appropriate signifi where a the situation used to describe *5 cantly larger prominent or newcomer “satu argues that the consum that is market” with a trademark rates the of the ers are informed and deliberate users smaller, that sen confusingly similar to of parts automotive distribution goods or services. registrant for related ior services, unlikely would be to be con who Quaker Sands, Taylor Co. v. Oats & Wood by use of the same fused Shell’s 947, 12, USPQ2d 24 957 & n. 978 F.2d lubrica mark for automotive oil and (7th 1001, Cir.1992), n. 12 cert. de 1010 & responds tion The services. Commissioner — -, nied, 113 S.Ct. 123 U.S. standard of care would not be that the same (1993). junior user does L.Ed.2d 497 by purchasers of expected to be exercised goodwill to benefit from the of not seek distributor, parts from a com user; however, may the senior user senior purchase routine oil pared with their of of its experience diminution or even loss Fuji In change and lubrication services. identity goodwill due to extensive mark’s K.K., Shoji 754 Film Co. v. Shinohara Photo confusingly similar mark use of (5th 591, 596, 542-43 F.2d 225 junior Banff, v. De user. Ltd. Federated Cir.1985), purchasers court held Stores, Inc., 486, 490, partment 841 F.2d 6 expensive printing presses are not necessari (2d Cir.1988); USPQ2d 1191 Ameri ly sophisticated purchasers buying when low- tech, Inc. v. American Technol Information In graphic cost arts materials. Weiss Asso 960, 966, USPQ2d ogies Corp., 811 F.2d 1 ciates, Associates, Inc., F.2d Inc. v. HRL 902 (6th Cir.1987). 1861, 1866 (Fed. 1546, 1548, USPQ2d 14 Cir.1990), sophisti that even of confusion between this court held avoidance by very disparate concept; purchasers not cated can be confused users of size is a new . however, Systems weighing of the similar marks See also Octocom relevant factors Inc., Computer Inc. v. Services 918 must take into account confusion Houston (Fed. 937, 942, USPQ2d may promotion of a 1787 flow from extensive simi F.2d junior Cir.1990), approved the lar or identical mark user. See wherein this court Inc., reasoning alleged expertise v. Viacom International 981 Board’s that “the DeCosta 602, 607-10, USPQ2d purchasing agents ... neither control [is] 1191-93 of (1st Cir.1992). considering ling persuasive.... likelihood of nor had to [C]onfusion 937, 942, (Fed. USPQ2d the mark will tions on how is used not be in 918 F.2d Cir.1990) (registrability Corp. ferred. See J & J Snack Foods v. Mc is based on the "identifi- Corp., goods application 18 USPQ2d
Donald's cation of set forth in the re- (Fed.Cir.1991) (registrability, gardless may is based of what record reveal as to ... description application); purchasers in the Octocom the class of to which sales of the Inc., directed.”). Systems goods Computer v. Inc. Houston Services are process. McCarthy, ination respect to users as well as See J. Thomas with be considered McCarthy on Trademarks and purchasers.” Unfair Com- actual (3d 1992) petition § (opposition 20.01[1] ed. sophistication disparity purchaser proceedings provide backstop purely “a ex purchasing care dis- and in the standard parte applica- examination of trademark at bar from those wherein tinguish the case tions”). purveyors’ of both primary consumers professional purchasers, as are The Board’s decision is Products, Inc. v. Astra Pharmaceutical AFFIRMED. Instruments, Beckman (1st Cir.1983), wherein the MICHEL, Judge, dissenting. Circuit purchasers of local anesthetic court held Because I believe that the Board’s conclu- medicines, preparations, cardiovascular sion of likelihood of confusion was erroneous hand, syringes, pur- prefilled on the one it, evidentiary respect- I record before analysis ma- computerized blood chasers fully dissent. I would remand the case chines, hand, profes- on the other are distinct findings, new based on record evidence in- confused; unlikely or in to be sionals speculation, stead of rank or reverse because Design Inc. v. Electronic Electronic & Sales there is no likelihood of confusion under the 713, 718, 21 Systems Corp., 954 F.2d Data marketing by the circumstances established (Fed.Cir.1992), wherein prior registration, application-in-suit, appli- purchasers held that of the the court documentary the other record. evidence of battery chargers power supplies for cant’s subsequently only Evidence us submitted devices, purchasers op- electronic may properly be taken into account. systems, were poser’s computer service mostly sophisticated consumers of these I. likely. goods and thus that confusion was not *6 finding no in the Board’s We discern error “[cjustomers finding The Board’s that for similarity of these marks and that the close include, among registrant’s services would likely of the services was to the relatedness others, stations, repair service cause confusion as to source or relatedness body shops, well retailers of auto- and as as the services. Co., parts,” motive In re Shell Oil Serial No. (TTAB 73/753,045, 16,1991) slip op. at Dec. 8 Conclusion added), (emphasis unsupported by any was factors, Although may Considering and for evidence of record. the Board all the discussed, inferences from the evi- have we conclude draw reasonable the reasons we dence, may simply a be it assume whom there is a likelihood of confusion that “would include.” registrant’s mark customer base tween the RIGHT-A-WAY identi- Because there was no record evidence design and Shell’s mark RIGHT-A customers, the Board can against fying registrant’s design. Doubt is resolved WAY and (Ohio), entirely its newcomer, only finding its on Hyper Shoppes have based the In re if 463, 464-65, speculative assumptions. Even these USPQ2d own 837 F.2d 6 correct, (Fed.Cir.1988), coincidentally assumptions are for the newcomer has 1026 is, by confusion, only assumptions finding based opportunity avoiding and is the definition, clearly erroneous. charged obligation the to do so. with conclusion was argued Inasmuch as the Board’s hearing that doubt At the Shell clearly erroneous on this by approving applica- based should be resolved it, too, par- finding, must be erroneous. publishing the mark registration, tion non-compet- ties’ services are different opposition. purpose of trademark There- ing, channels of trade. with different is for the Office to determine examination fore, if, instead, finding customers parte about in ex of likelihood of confusion issue advertised that sold and opposi- had been proceedings applicant. with turn, (who, retail- only jobbers sold to remedy over- to procedure intended to tion is might ers), registrant who error, the customers of for the exam- sight or not to substitute 1210 subject ju- hence to our all be and verifiable —and service stations would
go applicant’s all stations dicial notice —that Shell service finding professionals.1 Such sophisticated design. signs bearing the Pecten It have analysis by changed the entire have would — therefore, follows, change Shell’s oil addition, by us. In such the Board and and, always lubrication services have been majority’s finding have blocked would per application, always at will be offered Design & attempt distinguish Electronic fa- its hence view of Shell’s stations and Sales, Systems Corp., Data Inc. v. Electronic design and the name “Shell.” (Fed.Cir. mous Pecten USPQ2d 21 1388 954 F.2d Thus, likely any motorist would it is not 1992) (EDS), Pharmaceutical and Astra sponsorship be confused as to the source or Instruments, Inc., Products, Beckman Inc. v. very Even those few mo- (1st of these services. Cir.1983), USPQ 786 registrant’s servic- torists who were aware of dispari- present case on the basis from the intuitively would know es and service mark ty sophistication. change that oil and lubrication services ad- legal assumptions can skew Because by the mark at Shell stations are vertised analysis, law is well settled that sponsored by only. and Shell There- legal of likelihood of con Board’s conclusion fore, purchasers the Board’s conclusion just on more than fusion must be based likely registrant’s services would be con- speculation. possibilities theoretical upon coming to Shell stations is fanci- fused EDS, at F.2d at contrary ig- It ful and to common sense. 1391, 1393(quoting Co. v. Whit Witco Chem. realities, to the motor- nores the well known Co., 418 F.2d Chem. field customers, ing public, including registrant’s (CCPA 1969) citing USPQ company that no oil offers oil or lube Carter-Wallace, Inc. v. Procter & Gamble (or such) by anyone sponsored other 794, 804, realities, Marketplace else at its stations. (9th Cir.1970), respectively); re Bed & however, supposed to control likelihood are Registry, Breakfast analysis. of confusion See J. Thomas (Fed.Cir.1986) J.) (Newman, McCarthy, McCarthy on Trademarks and (“This theory, opinion, the nub of the Board’s (3d 1992). § Competition Unfair 23.17 ed. supported evidence.... We are is not assumption, speculative left an inade with III. legal reached quate basis for the conclusion Likewise, there is no likelihood of reverse Board.”). condemned in What we *7 one, registrant’s no cus- confusion because however, Breakfast, we bless here. Bed & all, tomers least of would think that Shell parts to retail would distribute automotive
II. stores, repair shops, parts auto indeed, or, body shops, sta- assuming, arguendo, non-Shell service Even go finding tions. For Shell to do so would be to into speculative Board’s as to itself, correct, my against all of those in view even business because customer base was compete repair unsophisticated con- entities with Shell’s auto motorists would be Nor, reason, bays. very same would application for its for fused. While Shell’s by origi- subsidiary, or be owned a AND mark Shell own RIGHT-A-WAY DESIGN Thus, regis- parent company, that did so. nally the services used in connection defined customers, unsophisticated if merely trant’s even with that mark as “Lubrication Oil care, likely Services,” employing would not be- Appendix Appellant for at lesser see either application mark’s lieve that Shell and were the amended limits the in another com- related or owned common use to Station Oil Lubrication “Service including regis- (emphasis pany. patrons, station Change Id. at 83 add- Gas Services.” ed). customers, major understand that oil knowledge, indisputable, trant’s It is common marketing ing quite from at the time our court different 1. Some of the new documents offered — indicated, although Unfortunately, so there was also application. on motion cate- of this neither indication, contrary perhaps explaina- which is gory the Board. of this evidence was before (as suggested) post-decision as market- ble companies operating service stations do not Therefore,
compete against themselves.
majority’s conclusion is erroneous under a analysis
reverse confusion as well.
CONCLUSION view, my very
In at the least this case prop
should be remanded to the Board for a finding by reopening
er of the facts the rec
ord to consider documents such as those
offered on motion to our previ court but not
ously yet, to the Board. Better our court reverse, simply
should view how the marketplace
realities of the relevant make
confusion of the marks for these dissimilar decidedly view, unlikely. my
potential number of relevant customers —cus companies tomers of both minuscule. —is brief,
According they to Shell’s consist en
tirely sophisticated buyers jobbers. services, moreover, closely are neither competing
related nor and use different
channels of trade. Yet the Board minimized factors,
these established the documenta evidence,
ry ignored realities the rele marketplace indulging
vant while far-rang
ing implausible speculation regis about
trant’s customers and their perceptions. Only by
This we should not condone.
reversal or remand can we honor the core
command of In re E.I. DuPont DeNemours & Kramer, Allen Brufsky, D. Brufsky & Ci- (CCPA 1973) each case of al — that felli, P.C., CT, Southport, argued plain- leged likelihood of confusion must be decided tiffs-appellees. particular facts of the case. Cantor, Fishman,
Michael A. Dionne & Cantor, Windsor, CT, argued for defendant- appellant. *8 MICHEL, COWEN,
Before Judge, Circuit RADER, Judge, Senior Circuit Circuit Q.G. PRODUCTS, Group, INC. and G.L. Judge. Ltd., Plaintiffs-Appellees, v. RADER, Judge. Circuit SHORTY, INC., Defendant-Appellant. The United States District Court for the No. 92-1247. granted District summary of Connecticut
United Appeals, States Court of Products, judgment Q.G. (QG). motion of Inc. Federal Circuit. Shorty, The district court found that Inc. 7,May infringed QG’s United Patent States No. (’438). 4,989,438 The district court also de- assignor estop- termined that the doctrine of pel Shorty’s invalidity barred defense. Be-