A recent trademark opposition is a lesson in what happens when there is a crowded field of similar trademarks.
In Inter-Industry Conference on Auto Collision Repair v. LM Industries Group, Inc., Applicant sought registration of the mark ICAR or land vehicles in International Class 12. Opposer filed a notice of opposition against the ICAR application on the basis that it was likely to cause confusion and dilute Opposer’s rights in its eight registered marks incorporating the term I-CAR. Opposer’s marks are in the field of auto body repair and damages analysis. In its analysis of whether a likelihood of confusion existed between the parties’ marks, the TTAB compared Opposer’s Reg. No. 1607727 of I-CAR for “educational services consisting of conducting training course in auto body repair and damages analysis,” in Class 41 with Applicant’s mark in Class 12. The Board chose this specific registration as it was the closest to the goods offered by Applicant for the same or similar auto body repair and damages field.
In its opinion, the Board recognized in that analyzing the relevant likelihood of confusion factors, two key considerations are the similarity of the marks and the similarity of the goods or services. Yet at the end of the day, the number of third-party registrations of ICAR and its derivatives proved conclusive.
In ruling against the Opposer, the Board reasoned that:
Despite the similarities of the marks and the niche fame of Opposer’s mark, we find that the number of third-party users for automobile related services, the differences between the goods and services, channels of trade, and classes of consumers, as well as the heightened degree of sophistication and care in the decision-making process in purchasing Opposer’s educational services and Applicant’s automotive goods, warrant a finding that there is no likelihood of confusion.
Editor’s Note: The Board’s finding that no likelihood of confusion existed between the parties’ marks was despite the fact that it concluded that Opposer’s mark was strong and had achieved fame in the field of automobile collision repair. However, since ICAR derivatives had been registered and used by numerous other third-parties for other facets of automobile goods and services, it concluded that Opposer was entitled to a restricted scope of protection outside the automobile collision repair category.