Here's a real yawner. The Board affirmed a refusal to register the mark BULLET for "Bicycle parts, components and accessories, namely, bicycle wheels, rims and spokes for bicycle wheels, hubs, fast-locking hubs for bicycle wheels, brakes, tires, tubular tires, and inner tubes," finding the mark likely to cause confusion with the registered mark BULLIT for "bicycle (sic) and bicycle frames." Applicant argued that its actual products are specialized and expensive, and are sold under the famous mark "Camapagnolo." Irrelevant, said the Board. In re Campagnolo S.R.L., Serial No. 85168469 (May 4, 2016) [not precedential].
The Marks: Applicant argued that "bullit" is an invented word that has no meaning, whereas "bullet" has well established meanings, but that argument missed the target. The Board observed that a slight difference in spelling does not always result in differences in meaning or connotation. The Supreme Court long ago observed that "[b]ad ornithology has not yet become so rare or so easily detected as to make a word the arbitrary sign of something else than its conventional meaning." The Board agreed with Examining Attorney Leslie L. Richards that because "bullit" does not have a recognized meaning, consumers are likely to assume that it means the same as the phonetically equivalent word "bullet."
Therefore the Board found that the marks are highly similar, and so the first du Pont factor weighed against Applicant Campagnolo.
The Goods: Third-party registration evidence demonstrated that the goods are related and are sold in the same channels of trade to the same customers. Campagnolo maintained that its goods are "limited to expensive products sold to knowledgeable and sophisticated purchasers only through authorized distributors." The Board, however, pointed out that there are no such limitations in the opposed application. Nor was there any evidence that ordinary purchasers of bicycles or parts "are so discriminating or exercise such care in their purchases as to avoid confusion when related goods are sold under similar marks."
The Board found the involved goods are closely related, are advertised and sold in the same channels of trade, to the same (or an overlapping group of) purchasers.
Campagnolo asserted that absence of actual confusion during two years of coexistence on the market supported a finding of likely confusion. Not long enough, said the Board. Moreover, the absence of evidence of actual confusion is seldom probative in the ex parte context because the registrant has no opportunity to submit evidence on the issue.
Campagnolo claimed that it is "an iconic source of cycling components," and "extremely well-known and highly regarded in the cycle racing world ...." The Board pointed out, however, that a junior party "gains no advantage when its fame eclipses that of the prior users." [Can you say "reverse confusion"? - ed.].
Finally, Campagnolo asserted that its BULLET trademark is always use along with the CAMPAGNOLO house mark, but the Board pointed out that the only trademark it may consider is the one applied for.
And so the Board affirmed the Section 2(d) refusal.