Shell Oil Co., In re

• Decision Date: 29 April 1993
• Docket Number: No. 92-1211,92-1211
• Citation: 26 USPQ2d 1687,992 F.2d 1204
• Parties: , 26 U.S.P.Q.2d 1687 In re SHELL OIL COMPANY.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1204

992 F.2d 1204

61 USLW 2692, 26 U.S.P.Q.2d 1687

In re SHELL OIL COMPANY.

No. 92-1211.

United States Court of Appeals Federal Circuit.

April 29, 1993.

Rehearing Denied; Suggestion for

Rehearing In Banc Declined

July 2, 1993.

Thomas J. Ward, Ward, Lazarus & Grow, of Washington, DC, argued, for appellant. With him on the brief was John T. Lanahan. Also on the brief was Kimbley L. Muller, Shell Oil Co., of Houston, TX, of counsel.

Albin F. Drost, Deputy Sol., Office of the Solicitor, of Arlington, VA, argued, for appellee. With him on the brief was Fred E. McKelvey, Sol. Of counsel were Nancy C. Slutter, John W. Dewhirst, Lee E. Barrett and Richard E. Schafer.

Before NEWMAN, MICHEL, and PLAGER, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

Shell Oil Company appeals the decision of the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, refusing to register the service mark RIGHT-A-WAY and arrow design for "service station oil and lubrication change services". ¹

Background

On September 19, 1988 Shell Oil filed application Serial No. 73/753,045 to register the following service mark:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Shell claimed use since August 5, 1988.

The examiner refused registration based on section 2(d) of the Lanham Trademark Act, ² citing the registration on January 17, 1984 of the service mark RIGHT-A-WAY and arrow design for "distributorship services in the field of automotive parts":

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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The registrant is R.A. Industries, Inc. First use in commerce on March 11, 1982 is stated in the registration.

The Board affirmed the refusal of registration, holding that there was likelihood of confusion in view of the substantial identity of the marks and their use in connection with automotive-related services.

Discussion

Likelihood of confusion under section 2(d) is determined as a matter of law, on the factual record. Each case of likelihood of confusion is decided upon the particular facts of the case, In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (CCPA 1973), recognizing that the various evidentiary factors may play more or less weighty roles in any particular determination. Nina Ricci, S.A.R.L. v. E.T.F. Enterprises, Inc., 889 F.2d 1070, 1073, 12 USPQ2d 1901, 1903 (Fed.Cir.1989). On appeal to this court the Board's conclusion is given de novo review as to the ultimate question of likelihood of confusion, and the factual findings on which this conclusion is premised are reviewed for clear error. Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 671, 223 USPQ 1281, 1282 (Fed.Cir.1984).

In reviewing the question of likelihood of confusion between the two marks at bar, we have given particular attention to the following factors:

1. The Marks

The marks are considered in their entireties, words and design. The Board placed weight on the identity of the words RIGHT-A-WAY, and the presence of an arrow design in both marks. Shell points out that there are differences in the script, as well as in the form of the arrow design. Shell argues that the arrow is the dominant feature to be compared, stating that the words "right-a-way" are descriptive or highly suggestive of the services with which they are used.

Without doubt the word portions of the two marks are identical, have the same connotation, and give the same commercial impression. The identity of words, connotation, and commercial impression weighs heavily against the applicant. See In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566, 223 USPQ 1289, 1289-90 (Fed.Cir.1984). We agree with the Board that the words dominate these marks, and that their differences in script and arrow design do not diminish their substantial identity when viewed as a whole.

2. The Disclaimer

Shell argues that the words are common dictionary words, and that since Shell filed a disclaimer of the words "Right-A-Way", the only issue of registration relates to the script and the arrow design. The Board correctly held that the filing of a disclaimer with the Patent and Trademark Office does not remove the disclaimed matter from the purview of determination of likelihood of confusion. See In re National Data Corp., 753 F.2d 1056, 1058-59, 224 USPQ 749, 750-51 (Fed.Cir.1985) (rejecting the "tactical strategy" of disclaimer filing, in determination of likelihood of confusion).

The marks must be considered in the way in which they are perceived by the relevant public. Shell's argument that the only consideration is the "design form" of the words "Right-A-Way", omitting the words "right-a-way" because they were disclaimed, was correctly rejected by the Board.

3. The Services

The registrant's services were described in the registration document as "distributorship services in the field of automotive parts", and were found by the Board to include "buying R.A. Industries provides management services for all its subsidiaries including accounting, data processing and planning services to the distributors and retail stores. In every instance the mark is controlled and owned by R.A. Industries. ³

                automotive parts from a manufacturer, and then distributing automotive parts on a wholesale basis to retailers who, in turn, sell the parts at retail to the ultimate consumer."   The Board held that the registrant's automotive parts distributorship services and Shell's service station oil change and lubrication services were related, and would be so perceived by consumers.   Shell argues on appeal that the respective services and accompanying channels of trade are different, such that there would not be a likelihood of confusion as to the source of these services.   Shell states that the registrant's services are known exclusively to "jobbers".   This is neither dispositive nor supported by the record.   Indeed, the registrant's record before the Patent and Trademark Office included an Amendment stating that
                

The services with which the marks are associated are not identical. The degree of "relatedness" must be viewed in the context of all the factors, in determining whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship. It is relevant to consider the degree of overlap of consumers exposed to the respective services, for as discussed in Philip Morris Inc. v. K2 Corp., 555 F.2d 815, 816, 194 USPQ 81, 82 (CCPA 1977), even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source.

4. Extent of Consumer Confusion

The Board described potential consumers of Shell's oil change and lubrication services as the broad class of automobile owners. Shell referred to its twelve thousand automotive service stations that would use the mark RIGHT-A-WAY. Indeed, Shell does not dispute the Board's finding that substantially all of the registrant's customers are prospective consumers of Shell's services.

Shell argues that the number of consumers of the registrant's services is small, and thus that confusion would be de minimis. However, the rights flowing from federal registration do not vary with the size of the registrant; a small business that meets the statutory requirement of providing its services "in commerce", 15 U.S.C. § 1051(a)(1), is not rationed, because it is small, in the rights secured by the Lanham Act. See Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1568, 218 USPQ 390, 393 (Fed.Cir.1983) ("15 U.S.C. § 1057(b) creates a presumption that the registrant has the exclusive right to use its mark throughout the United States"); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 n. 4 (Trademark Trial & Appeal Bd.1987) (the Lanham Act "accords a registrant prima facie exclusive rights in the registered mark for the goods or services recited in the registration throughout the United States regardless of its actual extent of use.").

Even if the overlap between consumers of registrant's RIGHT-A-WAY services and Shell's RIGHT-A-WAY services were small in relation to the total number of Shell customers, it is not de minimis in relation to the registrant's customers. A newcomer does not gain the right to register a substantially identical mark ⁴ simply because The term "reverse confusion" has been used to describe the situation where a significantly larger or prominent newcomer "saturates the market" with a trademark that is confusingly similar to that of a smaller, senior registrant for related goods or services. Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957 & n. 12, 24 USPQ2d 1001, 1010 & n. 12 (7th Cir.1992), cert. denied, --- U.S. ----, 113 S.Ct. 1879, 123 L.Ed.2d 497 (1993). The junior user does not seek to benefit from the goodwill of the senior user; however, the senior user may experience diminution or even loss of its mark's identity and goodwill due to extensive use of a confusingly similar mark by the junior user. Banff, Ltd. v. Federated Department Stores, Inc., 841 F.2d 486, 490, 6 USPQ2d 1187, 1191 (2d Cir.1988); Ameritech, Inc. v. American Information Technologies Corp., 811 F.2d 960, 966, 1 USPQ2d 1861, 1866 (6th Cir.1987).

                the number of persons exposed to the registrant's mark may be small in relation to the newcomer's volume of use.   The registrant/senior user is safeguarded by the trademark law, as is the consuming public, from likelihood of confusion caused by the entry of a junior user of a confusingly similar mark.  Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198, 105 S.Ct. 658, 663-64, 83 L.Ed.2d 582, 224 USPQ 327, 331 (1985).   The trademark law not only protects the consumer from likelihood of confusion as to commercial sources and relationships, but also protects the registrant and senior user from adverse commercial impact due to use of a similar mark by a

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