United States: Finding Confusion And Dilution Likely, TTAB Sustains AMERICAN EXPRESS Oppositions To AMERIXPRESS

Last Updated: December 20 2018
Article by John L. Welch

One day after oral argument, the Board issued its 38-page decision sustaining the oppositions of American Express to registration of AMERIXPRESS for "Import agency services" and AMERIXPRESS LLC for nutritional supplements and "Export agency services for the goods of others," on the grounds of likelihood of confusion with, and likelihood of dilution of, the mark AMERICAN EXPRESS, registered for various financial and credit card services, and for "general merchandise mail order services." Opposer's staggering revenues and advertising figures convinced the Board that AMERICAN EXPRESS is a famous mark for credit card services, enjoying both "likelihood of confusion fame" and fame for purposes of likelihood of dilution. American Express Marketing & Development Corp. v. Tung V. Bo, Oppositions Nos 91230559 and 91232714 (December 13, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).


Likelihood-of-Confusion Fame:

"In determining the strength of a mark, we consider both its inherent strength, based on the nature of the mark itself, and its commercial strength, based on marketplace recognition of the mark." There was no evidence or testimony regarding third-party use or registration of AMERICAN EXPRESS or variations thereof that would suggest that the mark is not inherently distinctive.

As to commercial strength, the evidence showed that in the years 2010-2016, some 50 million AMERICAN EXPRESS credit cards were in force in the U.S., with total billing near or above $500 billion per year and annual revenues in the $10-$13 billion dollar range. On average, AmEx has invested $2 billion per year since 2013. (Emphasis by the Board). An internal survey indicated 98-99% consumer recognition. The AmEx website has generated about 1.7 billion page views since 2013, with more than 400 million unique visitors. Forbes ranked AMERICAN EXPRESS as the world's 23rd most valuable brand.

The Board concluded that AMERICAN EXPRESS is a famous mark in connection with credit card services. The Board agreed with applicant that the mark is not famous for import or export services or for supplements, but it observed that this does not undercut the scope of protection accorded a famous mark. See Recot Inc. v. M.C. Becton, 54 USPQd at 1897. Accordingly, the Board concluded that the AMERICAN EXPRESS mark is entitled to "a very broad scope of protection."

The Marks: Not surprisingly, the Board found applicant's marks to be similar to the AMERICAN EXPRESS mark in appearance, sound, meaning, and commercial impression. Consumers will interpret AMERI as a shortened form of AMERICAN and XPRESS as a shortened form of EXPRESS. The disclaimed term LLC has no source-identifying significance.

The Goods and Services: The Board acknowledged that applicant's goods and services differ from those of Opposer AmEx. However, the Section 2(d) test is not whether the goods/services are likely to be confused, but whether purchasers are likely to be confused as to source, connection, or sponsorship between the providers of the goods and services. The Board concluded that consumers will likely mistakenly believe that applicant's products and services are somehow sponsored by or associated with AmEx. It observed that the fame of opposer's mark plays a role in the analysis of this factor, since famous marks "cast a long shadow."

Consumers familiar with Opposer's famous AMERICAN EXPRESS credit card services, as well as its cross border payment services, local currency corporate cards, foreign remittance services, electronic funds transfer services and foreign currency exchange and payments services, upon encountering Applicant's AMERIXPRESS import and export services will mistakenly believe that the services emanate from the same source or are otherwise somehow affiliated because of the similarities of the marks. Likewise, consumers familiar with Opposer's famous AMERICAN EXPRESS credit card services and its "general merchandise mail order services" upon encountering Applicant's AMERIXPRESS vitamin, mineral and nutritional supplements are likely to mistakenly believe that Applicant's goods emanate from or are associated with 0pposer's services.

Trade Channels:

There are no restrictions on trade channels or classes of consumers in the involved applications and cited registrations. A consumer of applicant's services may also utilize AmEx's various credit card and financial services. And applicant's supplements may be sold through AmEx's general merchandise mail order services.

Purchaser Care: Despite the sparse evidence, even assuming that consumers will exercise a high degree of care, "the potential for confusion is accentuated by the significance of Opposer's AMERICAN EXPRESS mark, as well as the similarity of the marks because many potential consumers may not notice the differences in the marks."

Conclusion: The Board found confusion likely and it therefore sustained opposer's Section 2(d) claim.

Likelihood of Dilution: Keeping in mind that, for dilution purposes, a famous mark is one that has become a "household name," the Board found that AMERICAN EXPRESS is famous and "was so prior to the filing date of Applicant's applications [in 2016]"

As to the marks at issue, the Board found them to be "sufficiently similar in their overall commercial impression" that "consumers encountering Applicant's AMERICAN EXPRESS mark will immediately be reminded of Opposer's famous AMERICAN EXPRESS mark."

The Board also found that AMERICAN EXPRESS is inherently distinctive, that opposer is engaging in substantially exclusive use of the mark, and that the mark has a high degree of consumers recognition. There was no evidence that applicant intended to create an association with the mark, nor was there evidence of actual association.

Conclusion: The dilution factors, other than intent and actual association, favored a finding of likelihood of dilution, and so the Board sustained opposer's Section 43(c) claim.

The TTABlog

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions