Pattishall IP Blog

January 17, 2012

ROLEX vs. ROLL-X: TTAB Says that ROLL-X for X-ray Tables Does Not Dilute Famous ROLEX Mark

Filed under: Dilution, TTAB — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:10 pm

By Janet Marvel, Trademark Attorney

In a precedential decision issued on December 5, 2011, the Trademark Trial and Appeal Board (“TTAB”) held that ROLEX was famous for watches under the Trademark Dilution Revision Act of 2006, 15 USC 1125 (c) (“TDRA”), but the mark ROLL-X was not sufficiently similar to create a likelihood of dilution.  See Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188 (TTAB 2011).  The decision provides guidance on the TTAB’s test for determining similarity for purposes of dilution and its interpretation of survey evidence.

AFP Imaging Corp. (“AFP”) filed an application in 2008 for ROLL-X for “x-ray tables for medical and dental use.”  AFP claimed that it adopted the mark as an extension of its DENT-X brand (also for x-ray products).  It also stated that it adopted ROLL-X because the mark evoked the description of its product, namely a rolling tray for taking x-rays.  Both of these facts proved critical to the TTAB’s decision.  Upon publication of the application, Rolex opposed.  The case went to trial on two issues: (1) whether ROLL-X diluted ROLEX by blurring the significance of the ROLEX mark, and (2) whether AFP had a bona fide intention to use ROLL-X.

On dilution, the TTAB found for Rolex on every factor, except two: the similarity of the marks, and AFP’s intent to dilute.  To determine whether the marks were similar for dilution purposes, the TTAB applied its previously iterated test:  “[A]re applicant’s and opposer’s marks ‘sufficiently similar to trigger consumers to conjure up a famous mark when confronted with the second mark?'”  citations omitted.   The Board stated that while the marks were pronounced identically, “[b]ecause of the hyphen between ROLL and X, consumers are likely to view the mark as consisting of the English word ROLL, which has various meanings including ‘to move on rollers or wheels,’…and the letter ‘X,’ which, when the mark is used in connection with applicant’s goods, is likely to be perceived as suggesting the term ‘x-ray’ ….”  The Board cited applicant’s CEO’s testimony, confirming AFP’s intent to create that association.  Because of this stated intent, the Board found there was no evidence that AFP intended to dilute.

The Board also found that Rolex’s own survey supported a lack of dilution.  Forty-two percent of qualified respondents stated that “ROLEX” came to mind when they encountered ROLL-X in a telephone survey.  However, 32 percent said “portable/movable/rolling,” 18 percent said “x-ray tables/equipment” and seven percent said “x-rays.”  While 42 percent would, at least in the context of a confusion survey, be considered a compelling number, “[t[his figure is not persuasive given that a higher percentage…thought of a feature of the goods…or the actual goods themselves.”  In other words, respondents understood ROLL-X to convey the impression AFP sought to convey.

The Board cited a common problem with dilution surveys: they prove association, but not likelihood that the applicant’s mark will impair the distinctiveness of the opposer’s mark.”  Since AFP’s application was based on intent-to-use, it seems nearly impossible to construct a survey that could establish likelihood of impairment.

The Board also found that Applicant had a bona fide intent to use the ROLL-X mark when it filed the application.  AFP did not have any documentary evidence of its intent to use the mark, therefore, it carried the burden to show that it did have such an intent.  The Board found that AFP’s prior use and registration of DENT-X was evidence that “ROLL-X is consistent with an extension of [AFP’s] current product line.” In addition, the Board found that AFP’s production of DENT-X x-ray products showed it had the capacity to produce other x-ray-related products, like those to be sold under the ROLL-X brand.

Here, AFP was saved because it could establish that it intended ROLL-X to be suggestive of its products’ characteristics.  Overall, the case emphasizes the significant difficulty of proving a dilution case.  Moreover, it underscores a best practice, namely that applicants should maintain documentary evidence of intent to use trademarks at the time of filing, so that they may overcome oppositions on the basis that they lacked this intent.

*     *     *

 Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

For a printer-friendly version, click here.

April 1, 2010

Second Circuit Largely Affirms Tiffany v. eBay Judgment that eBay Did Not Infringe or Dilute the TIFFANY Trademark by Using it in Auctions

Filed under: Dilution, Internet, Litigation — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:22 pm

by Uli Widmaier, Trademark Attorney

Earlier this afternoon, the Court of Appeals for the Second Circuit issued its long-awaited decision in Tiffany v. eBay, No. 08-3947-cv, slip op. (2d Cir. Apr. 1, 2010).  The Court affirmed the District Court’s much-noted 2008 ruling in eBay’s favor on the trademark infringement and dilution claims, but remanded the case to the District Court for further consideration on the false advertising claim.  Tiffany alleged that the majority of “Tiffany” goods offered by vendors on eBay were in fact counterfeit.  Tiffany claimed that by using the TIFFANY mark in its advertising, by failing to take more drastic measures to stop the sales of counterfeit Tiffany items, and by advertising in such a way as to mislead consumers into believing that all Tiffany items sold on eBay were genuine, eBay had engaged in direct and contributory trademark infringement and false advertising.  The District Court entered judgment against Tiffany on all claims.  This appeal followed. (more…)

December 15, 2009

Second Circuit: “Substantial Similarity” Not Required to Prove Dilution by Blurring Under the TDRA

Filed under: Dilution — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:08 pm

by Ian J. Block, Trademark Attorney

In a dispute that has bounced between the district and appellate courts for nearly a decade, the Second Circuit recently clarified an important part of the standard for proving dilution by blurring under federal trademark law.  In Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2009 U.S. App. LEXIS 26300, 92 U.S.P.Q.2d 1769 (2d Cir. 2009), the Second Circuit distinguished the requirements for finding dilution under the prior Federal Trademark Dilution Act (“FTDA”), the current Trademark Dilution Revision Act (“TDRA”), and New York state dilution law, N.Y. Gen. Bus. Law § 360-l.  The court found that “substantial” similarity between a famous mark and an accused mark is not required for a successful claim of dilution by blurring under the current post-TDRA federal dilution provision, 15 U.S.C. § 1125(c).  The Second Circuit remanded on this point but affirmed the district court’s dismissal of Starbucks’s other claims. (more…)

May 13, 2009

Chicago Trademark Attorneys successfully conclude Federal court litigation to protect the Peabody Hotels’ Peabody name and famed marching ducks

Filed under: Dilution, Pattishall — Tags: — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 8:56 pm

Belinda Scrimenti represented the owner of the Peabody Hotels in the case filed in Memphis, Peabody Management, Inc. v. Peabody Painting and Waterproofing, Inc. (U.S.D.C. W.D. Tenn. No. 07-2675).  Concluding the case, Judge Bernice B. Donald recently entered a Consent Permanent Injunction that enjoins a national hospitality industry painting contractor from acts of trademark infringement and trademark dilution by use of the name “Peabody” and combinations of the Peabody name with a duck logo. Under the terms of the injunction, the defendant has a limited period to transition to a new name that will not incorporate the name “Peabody.”

Prior to the litigation, in addition to registering over 40 traditional word and duck logo and design marks on behalf of the Peabody Hotels, Ms. Scrimenti had successfully registered one of the most unique marks on the U.S. trademark register – the motion of the famous Peabody Hotel Duck March itself. (more…)

Blog at