In Hunt Control Systems Inc v Koninklijke Philips Electronics NV(1) the opponent, Hunt Control Systems Inc, struggled against several procedural hurdles, including the strict application of rules promulgated in response to the Madrid Protocol. Despite this, Hunt ultimately prevailed against Koninklijke Philips Electronics NV, with the Trademark Trial and Appeal Board (TTAB) holding that there was a likelihood of confusion between Hunt's SIMPLICITY mark and Koninklijke Philips' application for the registration of SENSE AND SIMPLICITY.
Koninklijke Philips, a Dutch corporation, filed an application for extension of protection based on an international registration of the mark SENSE AND SIMPLICITY, in standard characters, under the Madrid Protocol. Hunt opposed the application based on its own application for the SIMPLICITY mark, which matured into a registration during the pendency of the opposition. Koninklijke Philips' application covered four international classes of goods and listed numerous goods within each class. Hunt's notice of opposition covered only six specific goods within Class 9; however, the supplementary explanation for the basis of the opposition (considered along with the notice of opposition as part of the entire operative complaint) claimed to oppose those six specific goods "and related products in International Class 9".
This created Hunt's first procedural difficulty. Under the Madrid Protocol, a notice of opposition must be communicated to the International Bureau of the World Intellectual Property Organisation, and the US Patent and Trademark Office (USPTO) has promulgated certain rules to facilitate this process. In particular, all oppositions to Section 66(a) (Madrid Protocol) applications must be filed through the USPTO Electronic System for Trademark Trials and Appeals (ESSTA) electronic filing system, which requires the opponent to provide certain specific information, such as the specific goods and/or services in the application it is opposing, which the system uses to generate the notice of opposition.(2)
Additionally, the USPTO permits no amendments to the pleadings in a Section 66(a) opposition "to add to the grounds for opposition or to add to the goods or services subject to opposition".(3) The TTAB read those rules to say that Hunt could not rely on the "and related products" language contained in its supplementary explanation to expand the scope of the goods listed in the ESSTA-generated notice of opposition form. Hunt's opposition was therefore limited to the six specific goods recited in that notice.
The TTAB also addressed at least two other procedural matters. First, Hunt claimed common law rights in the SIMPLICITY mark for electrical light dimmers, electrical control panels "and their related components". Koninklijke Philips argued that the "and their related components" language was too ambiguous to provide adequate notice of the basis of Hunt's claims. However, the TTAB dismissed this objection, as Koninklijke Philips could have filed a motion for a more definite statement under Rule 12 of the Federal Rules of Civil Procedure, but did not. Second, the TTAB found that Hunt could not rely on its federal registration for the purposes of establishing priority because the mark was actually owned by Carbide Corporation, Hunt's holding company, and the presumptions afforded by the Lanham Act could not transfer to Hunt as a separate legal entity. This matter was ultimately not determinative, however, as Koninklijke Philips conceded priority to the goods for which Hunt claimed common law rights.
Following these procedural matters, the TTAB addressed whether there was a likelihood of confusion between Hunt's mark and that of Koninklijke Philips. Using the traditional du Pont factors, the TTAB found that:
- the goods were at least partially identical;
- the goods were sold through the same trade channels to the same purchasers;
- purchasers would exercise only usual care and diligence when purchasing the goods; and
- the marks were similar.
Cutting against a likelihood of confusion, the TTAB determined that SIMPLICITY was merely suggestive and was thus not entitled to broader protections afforded to a more arbitrary mark. However, with all other factors adjudged neutral, the TTAB found that a likelihood of confusion existed between the marks. Furthermore, although the analysis was based only on the goods for which Hunt had established prior common law rights, the TTAB ruled that a finding of likelihood of confusion dictated refusal as to all of the opposed goods in the class.
The TTAB's precedential ruling in this case illustrates the burden placed on opponents to observe properly the filing formalities inherent in the opposition process, especially in regard to Section 66(a) applications under the Madrid Protocol. A mistake or omission as to the basis of opposition or the scope of goods opposed may irrevocably limit an opponent's right to relief, even where a likelihood of confusion is otherwise found to exist.
For further information on this topic please contact Howard J Shire at Kenyon & Kenyon LLP by telephone (+1 212 425 7200), fax (+1 212 425 5288) or email ([email protected]).
(1) Opposition 91173417, April 27 2011.