United States: TTAB Orders Cancellation Of MAXVOLINE Registration For Nonuse, But Dismisses Likelihood Of Confusion Claim With VALVOLINE And MAX LIFE

Last Updated: May 22 2019
Article by John L. Welch

In a 69-page decision, the Board granted a petition for cancellation of registrations for the mark MAXVOLINE, in standard character and design form, for "lubricants for automobiles" on the grounds of nonuse, but it dismissed petitioners' claims of abandonment through naked assignment and likelihood of confusion with the conjointly used and registered marks VALVOLINE and MAXLIFE for lubricants. Ashland Licensing & Intellectual Property LLC  and Valvoline Licensing and IP LLC v. Sunpoint International Group USA Corp., Cancellation No. 92057294 (April 26, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman).

Nonuse: Petitioners alleged that Respondent had not used its marks at the time it filed its Statements of Use, or by the expiration of the time to file its Statements of Use. The issue was whether showing samples of motor oil bearing the marks constituted transportation of the goods in commerce.

The specimen of use was a bottle of oil manufactured by Amalie Motor Oil with a MAXVOLINE label. Respondent printed the label on his digital printer. At the time, respondent started looking for suppliers and creating websites. It had no inventory and had not made any sales. There was no evidence of industry practice with regard to this type of sampling.

The Board found that the showing of the sample "was more in the nature of a preliminary advisory consultation than bona fide use of the MAXVOLINE mark in trade." There was no discussion about possible sales of the product to the customer. The record showed that Respondent "was not ready to use the mark in the ordinary course of trade in 2007 but was merely exploring such use at some point in the future."

Moreover Respondent transported the samples only in Florida. Amalie is also located in Florida.

Respondent has had minimal, if any, impact in the motor oil marketplace. There is no basis on which we can find that the intrastate movement of Respondent's MAXVOLINE product has had any effect on interstate commerce. See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d at 1055 (citing Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d 1640, 1644-45 (Fed. Cir. 2016)).

And so the Board granted Petitioners' claim of nonuse and ordered the registrations cancelled.

Likelihood of Confusion The Board found Petitioners' VALVOLINE mark to be famous, while the MAX LIFE mark was appropriately placed in the middle of the spectrum between very strong to very weak. The goods are identical, and thus they presumably travel in the same trade channels to the same classes of consumers.

Petitioners did not allege likely confusion with either of its two marks standing alone, but only conjointly. The Board, however, saw no reason to assume that purchasers would see the two marks, VALVOLINE and MAX LIFE, as anything other than two distinct marks, even though they are sometimes displayed on the same products and in the same advertising. "What is missing is testimony or evidence regarding consumer  propensity to dissect Petitioner's two marks and come up with a third."

In short, "Petitioners failed to make the case that consumers will perceive that Respondent's MAXVOLINE mark is a combination Petitioners' VALVOLINE and MAX LIFE trademarks."

The Board found that the involved marks are not similar in there entireties in appearance, sound, meaning, or commercial impression. Concluding that this first du Pont factor outweighed the others, the Board dismissed Petitioners' Section 2(d) claim.

Laches: Although petitioners waited almost five years after issuance to challenge the registrations,  the Board found the delay justifiable. Petitioners were waiting to see if the MAXVOLINE product would survive, "let alone impact the lubricant market before engaging in the time, effort and expense of a cancellation proceeding."

Moreover, Respondent failed to show any prejudice from the delay. First it failed to prove that it suffered any prejudice at trial, such as loss of evidence or memory of witnesses. Second, it failed to show any economic prejudice resulted from the delay.

Abandonment by Naked Licensing The documents that transferred ownership of the registrations to Respondent did not include the goodwill associated with the MAXVOLINE mark. The Board observed that an invalid assignment can result in "abandonment" only if the invalid assignment "causes the mark ... to lose its significance as a mark. See Section 45 of the Lanham Act. 

Here the assignments were not invalid. There was "a continuity of goodwill from the same, single continuing commercial enterprise albeit in different forms. The marks never lost their significance as trademarks and always symbolized the same source." And the goodwill was, in fact, transferred.

Therefore the Board dismissed this claim as well.

TTABlog comment:  Did the petitioners win the battle but lose the war? Respondent now has a finding of no likelihood of confusion.

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