The USPTO refused registration of the product configuration mark shown below left, for "barbeque grills," finding the design confusingly similar to the registered mark shown below right, for "outdoor cooking grills." Applicant argued that the du Pont factors regarding the similarity of the goods and the similarity of the channels of trade should be given little probative value, since the involved goods are barbeque grills and will necessarily be similar in those regards. How do you think this came out? In re All Seasons Feders, Ltd., Serial No. 86699952 (September 6, 2017) [not precedential] (Opinion by Judge Thomas Shaw).
Because the goods are legally identical, they are presumed to travel in the same, normal trade channels to the same, normal classes of purchasers. Applicant maintained that these factors should be given little weight because, in product configuration cases, the goods are necessarily the same, as are the trade channels and customers. The Board was unimpressed:
Applicant’s suggestion that these du Pont factors are of “little probative value” would have us virtually discard these factors. As the predecessor to our primary reviewing court has said: "We find no warrant, in the statute or elsewhere, for discarding any evidence bearing on the question of likelihood of confusion." Du Pont, 177 USPQ at 567.
Moreover, applicant's approach would have a "perverse effect" on the Section 2(d) analysis: "it would reduce a registrant's scope of protection as a competitor's goods come closer to those of the registrant. Such an argument strains credulity. Rather it is the newcomer who must avoid confusion with the senior user."
Turning to the marks at issue, applicant's mark consists of "a three-dimensional configuration of a firebox of an outdoor grill with equal length sides." The registered mark consists of the configuration of an octagonal firebox of an outdoor grill. [Note that the two small chimneys are shown in dashed line and are not part of the registered mark - ed.]. Both grills include an "octagonal firebo," and in both the width is greater than the height or depth. The main differences are: applicant's mark has two lids instead of one, and registrant's firebox appears not to be precisely octagonal in cross section.
The evidence, however, showed that manufacturers, including applicant, commonly offer grills under the same mark with one or two lids or "cooking chambers." Moreover, the Board did not find it significant that registrant's design is not precisely octagonal, since consumers normally retain only a general rather than a specific impression of trademarks. And registrant's mark is described as having an "octagonal firebox." The Board therefore found that the dominant feature of both grills is an "octagonal firebox" configuration.
Finally, the Board refused to hear applicant's assertion that the octagonal design is aesthetically functional, since that would amount to a collateral attack on the cited registration, which is not allowed during ex parte prosecution.
Considering the relevant du Pont factors, the Board found confusion likely and so it affirmed the refusal to register.