New York Trademark Attorney Blog
Equitable considerations play a role in the Trademark Trial and Appeal Board’s (the “Board”) deliberations when determining whether or not to grant a Petition to Cancel a trademark registration. See Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 USPQ2d 1203 TTAB (2006) [precedential], where the Board denied a cancellation petition based on laches even though the petitioner established by a preponderance of the evidence that confusion was likely. This is a notable precedent of the Board and a respondent facing a Petition to Cancel should be aware of the facts and prior Board findings so parallels can be drawn between relevant circumstances and precedential decisions.
Teledyne Technologies, Inc. (“Petitioner”) petitioned the Board to cancel Western Skyways, Inc.’s (“Respondent”) registration for the mark GOLD SEAL for aircraft engines based on grounds of likelihood of confusion between the sources of the goods and prior rights. The Petitioner’s mark is identical (GOLD SEAL) to Respondent’s and the mark is used for “airplane parts, namely ignition harnesses”. There was testimony from Petitioner’s senior project manager that an ignition harness is an essential part of an aircraft’s engine. There was further evidence that the Petitioner commenced use of the mark with ignition harnesses in 1991 while the Respondent’s use was not until 1994. The Board held that the Petitioner had priority of use and the Respondent did not contest this fact.
Regarding likelihood of confusion, the Board commented that the identical marks impact the relatedness requirement to the effect that the degree of similarity required between the parties’ goods declines. The Board held that the goods were commercially related. It was further held that aircraft engines and ignition harnesses for aircraft engines travel in the same or similar channels of trade. However, the Board found two du Pont factors that weighed in the Respondent’s favor: a sophisticated consumer base and the absence of actual confusion despite the marks simultaneous use in the same trade channels for about ten years. However, after weighing all the du Pont factors the Board determined that Petitioner proved its likelihood of confusion claim by a preponderance of the evidence. See our web page entitled, Likelihood of Confusion Refusals – 2(d) Refusals, to review all the factors involved in this analysis.