Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE ELDORADO MOTOR CORPORATION
Serial No. 567,938
March 25, 1988
Hearing: January 13, 1988
Stanley H. Foster and Frost & Jacobs for applicant
David H. Stine
Trademark Examining Attorney
Law Office 8
(Sidney Moskowitz, Managing Attorney)
Before Sams, Rice and Hanak
Members
Member
Applicant applied to register the mark MIRADA in block letters for 'recreational vehicles--namely, motorhomes, travel trailers, fifth wheel trailers and camper trailers.' [FN1] Registration was refused pursuant to Section 2(d) of the Lanham Trademark Act because of the existence of a block letter registration for the identical mark for 'watercraft, namely, boats.' [FN2]
Applicant and the Examining Attorney filed briefs and attended a hearing held on January 13, 1988.
The issue to be decided is whether the contemporaneous use of the identical mark MIRADA by registrant for boats and by applicant for motorhomes and trailers is likely to cause confusion, mistake or deception. This Board will confess at the outset that in resolving this issue, it is by no means free from doubt.
In arguing that confusion is not likely, applicant relies primarily on Westward Coach Mfg. Co., Inc. v. Ford Motor Co., 388 F.2d 627, 156 USPQ 437 (7th Cir. 1968), cert. denied 392 U.S. 927 (1968) and General Motors Corp. v. Cadillac Marine & Boat Co., 226 F.Supp. 716, 140 USPQ 447 (W.D. Mich. 1964). It is applicant's position that these two cases are 'the only case law applicable to our [present factual] situation.' (Applicant's reply brief page 5). [FN3] In each of these two cases, as well as in the Champion Home Builders case, the courts permitted the use of identical trademarks on different types of vehicles. In Westward Coach, the court permitted the use of the trademark MUSTANG by one party on trailers and campers and by the second party on automobiles. In Cadillac Marine, the court permitted the use of the trademark CADILLAC by one party on automobiles and by the second party on boats. Finally, in Champion Home Builders, the court in denying plaintiff's motion for a preliminary injunction permitted the use of the trademark CONCORD by one party on motorhomes and trailers and by the second party on automobiles. Accordingly, it is applicant's position that this Board should permit the registration of the mark MIRADA for motorhomes and trailers despite the fact that the identical mark has previously been registered for boats. [FN4]
At the outset, this Board notes that there is one important distinction between the mark MIRADA and the marks involved in the three cases cited by applicant. MIRADA is a decidedly distinctive trademark. It is Spanish word whose meaning--to glance or to view--is in no way even suggestive (much less descriptive) of either motorhomes or boats. Moreover, the record fails to indicate that even one other party besides the applicant and the registrant is making use of MIRADA for any type of goods, much less goods which may be characterized as vehicles.
*2 In contrast, the courts found the trademarks MUSTANG, CADILLAC and CONCORD to be weak trademarks entitled to a limited scope of protection in that they were geographic and historical terms (CADILLAC and CONCORD), or a common word widely used as a trademark by others (MUSTANG). [FN5]
Because the trademarks involved in the three cases cited by the applicant were given a limited scope of protection by the courts, this Board elects to accord these decisions limited precedential value in a proceeding which involves rights in a very distinctive mark (i.e. MIRADA). Moreover, this Board respectfully notes that in its 1968 decision in Westward Coach, the Court of Appeals specifically rejected as not actionable a type of likelihood of confusion which the Court of Appeals referred to as 'reverse confusion.' (156 USPQ at 441). Since the famous Big O Tire Dealers case of 1976, [FN6] the doctrine of 'reverse confusion' has been widely endorsed. See 2 McCarthy, Trademarks and Unfair Competition, § 23:1 E. at pages 48-50 (2d ed. 1984).
In the present case, the Examining Attorney has established that at least some dealers carry both boats on the one hand and motorhomes and trailers on the other hand. Applicant has responded by saying that the percentage of dealers which carry both lines of products is in the range of five percent to eight percent depending upon which statistical base is utilized. While applicant is correct that such combined dealerships are relatively uncommon, nevertheless, this Board is of the view that a prospective purchaser observing both a MIRADA motorhome and a MIRADA boat at the same dealership would assume that they are manufactured by the same company or at the very least, that the manufacturer of one vehicle was somehow endorsed by, sponsored by or otherwise affiliated with the manufacturer of the other type of vehicle.
Moreover, given the distinctiveness of the MIRADA trademark, this Board is likewise concerned that some prospective consumers would erroneously reach the same conclusion even when MIRADA motorhomes and MIRADA boats are sold at different dealerships. In making this finding, this Board is fully aware that the types of products involved (boats and motorhomes/trailers) are expensive items which are purchased with care. Nevertheless, it is our opinion that the use of the identical, highly arbitrary mark on both boats and motorhomes/trailers would result in confusion, mistake and deception among some prospective customers.
As we said at the outset, this case is a close one and it certainly is not free of doubt. As applicant acknowledges, it is the practice of this Board to resolve close cases involving the issue of likelihood of confusion in favor of the registrant or senior user. In re Colonial Stores, Inc., 216 USPQ 793, 794 (TTAB 1982). Indeed, this practice is mandated by the Court of Appeals for the Federal Circuit. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983).
*3 Decision: The refusal to register is affirmed.
J. D. Sams
J. E. Rice
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 567,938 filed November 12, 1985 claiming first use on September 1, 1985.
FN2. Registration No. 1,360,416 issued September 17, 1985 to Century Boat Company, Manistee, Michigan.
FN3. A review of applicant's brief suggests that applicant considers a third case to be applicable to the present factual situation. That case is Champion Home Builders Co. v. American Motors Corp., 197 USPQ 333 (E.D. Mich. 1978) which involved the use of the identical mark CONCORD by one party on motorhomes and trailers and by the second party on automobiles. See page 9 of applicant's brief.
FN4. Compare General Motors Corp. v. Aluminum Products, Inc., 120 USPQ 502 (TTAB 1959) (CADILLAC for winches and hoists held confusingly similar to CADILLAC for automobiles and automotive parts); In re General Motors Corp., 196 USPQ 574 (TTAB 1977) (STARFIRE for automobiles held confusingly similar to STARFIRE for automotive shock absorbers); and In re Jeep Corp., 222 USPQ 333 (TTAB 1984) (LAREDO for land vehicles and structural parts therefor held confusingly similar to LAREDO for pneumatic tires).
FN5. In Westward Coach, the Court of Appeals stated as follows at 156 USPQ 441: 'As stated by the district court, the word MUSTANG is not a unique or novel word, or one coined by appellants. It is a common noun. Prior to Westward's adoption of the word for its campers and travel trailers, it had been used on aircraft, automobile mufflers, automobile springs, automobile and truck brake linings, farm tractors, motorcycles, rebuilt automobile engines, storage batteries, hand trucks, truck engines, truck mountable cranes, and numerous other items.' In Cadillac Marine the District Court had this to say at 140 USPQ 453: 'Therefore, the name 'Cadillac' as a trademark possesses the infirmities of a trademark which are characteristic of both an historical and geographic name.' Finally, in Champion Home Builders, the District Court had this to say about the trademark CONCORD at 197 USPQ 333: '. . . [T]he name used by each [party] is a familiar name with well-known historic and geographic connotations.'
FN6. Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 408 F.Supp. 1219, 189 USPQ 17 (D. Colo. 1976), aff'd 561 F.2d 1365, 195 USPQ 417 (10th Cir. 1977), cert. denied 434 U.S. 1052 (1978).