A new precedent set forth for car clubs
By Marc Hamburgel; PAS Director Emeritus
The U.S. Trademark Trial and Appeal Board ruled on August 12, 20I9 that the "Pierce-Arrow" trademark cannot be registered by an unrelated third party for the production of a new automobile. The decision established a new precedent for protection of Collective Membership Marks.
This matter was first initiated on January 15, 2015 when Spintek Filtration, Inc., a company in Los Alamitos, CA, filed application to register "Pierce-Arrow" as a trademark for automobiles ... a limousine conversion based on a Bentley chassis.
Then began an intense 55-month legal action undertaken by our Intellectual Property Attorney, Alan S. Cooper of the Washington, D.C. Law Firm Westerman, Hattori, Daniels and Adrian.
Mr. Cooper marshaled the extensive resources of the PAS to demonstrate that The Pierce-Arrow Society and the Pierce-Arrow Automobile are an active, ongoing factor in the contemporary automotive world and that a new vehicle of the same name would create confusion as to its source, origin and relationship to the Pierce-Arrow Society and to existing Pierce-Arrow automobiles.
Interestingly, on April 13 last year, the TTAB selected the case, The Pierce-Arrow Society v. Spintek Filtration, Inc. for argument before a daylong conference of law students at the U.S. Patent and Trademark Office. Mr. Cooper represented the PAS at that oral hearing.
This case has been the subject of commentary by the legal industry press and by several law firms individually. For a more thorough explanation of the TTAB's decision, below are excerpts from a blog post written by Ira S. Sacks and Rachel B. Rudensky of the Akerman law firm.
In a recent decision concerning the scope of protection for collective membership marks, the Trademark Trial and Appeal Board sustained The Pierce-Arrow SOCiety's opposition to registration of PIERCE-ARROW for "automobiles" by Applicant Spintek Filtration, Inc. The Pierce-Arrow Society v. Spintek Filtration, Inc., Opposition No. 91224343 (August 12, 2019) [precedential]
A "collective membership" indicates that the user of the mark is a member of a particular organization. Fraternities often federally register their marks as collective membership marks. Collective membership marks are not trademarks or service marks in the ordinary sense; they are not used in business or trade, and they do not indicate commercial origin of goods or services. Registration of these marks fills the need of collective organizations who do not use the symbols of their organizations on goods or services, but who still wish to protect their marks from use by others.
Opposer The Pierce-Arrow Society ("Opposer'? is non-profit organization, founded in 1957 to preserve the heritage of and foster interest in PIERCE-ARROW cars that were produced and sold by The Pierce-Arrow Motor Car Company from 1901 to 1938. In their day, PIERCE-ARROW cars were status symbols, and were regarded as being of the highest quality.
Opposer owns a registered collective membership mark for PIERCE-ARROW SOCIETY, used for "indicating membership in a national organization whose aim is to foster and preserve interest in Pierce Arrow motor cars." However, Opposer is not a legal successor to The Pierce-Arrow Motor Company, nor did it acquire any of its assets or any rights in the PIERCE-ARROW mark.
However, to preserve its interest in its PIERCE-ARROW related mark, Opposer opposed Spintek's application to register PIERCEARROW for cars claiming: (1) false suggestion of a connection under Section 2( a) of the Lanham Act; and (2) likelihood of confusion under Section 2(d) of the Lanham Act. Section 2(d) proved to be the determining factor.
Section 2(d) - LIKELIHOOD OF CONFUSION
The Board explained that the likelihood of confusion analysis involving a collective membership mark and a trademark is not based on confusion as to the source of the goods or services provided by the organization; rather, the issue is whether relevant consumers are likely to believe that the trademark owner's goods "emanate
from or are endorsed by or in some other way associated with the collective organization. " Thus, the operative question was whether Applicant's PIERCE-ARROW cars and Opposer's organization whose aim was to foster and preserve interest in PIERCE-ARROW cars were sufficiently related that prospective purchasers of Applicant's cars would be likely to believe that they are sponsored by or in some way affiliated with Opposer.
The Board easily found that the parties' marks were highly similar in appearance, sound, connotation, and commercial impression.
The Board then focused on the parties' goods and services, paying close attention to the precise words claimed in the respective registration and application. "Opposer's collective membership mark identifies its organization's focus on PIERCE ARROW automobiles. Applicant Spintek's goods are PIERCE-ARROW automobiles." The Board pointed out that Opposer's registration was not limited to used cars, or specifically, cars manufactured by The Pierce-Arrow Motor Car Company. Therefore, the Board held that Opposer's registration could encompass Applicant's PIERCE-ARROW cars.
"To find a likelihood of confusion, the parties' goods and services need not be similar or competitive. It is sufficient that they are related in some manner and/or that the conditions and activities surrounding the marketing of the cars and membership services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer or source."
The Board therefore concluded that consumers are likely to assume a connection or affiliation with, or sponsorship by, the PierceArrow Society if the proposed PIERCE-ARROW mark is used for cars. Therefore, the Board sustained the opposition on the ground of likelihood of confusion under Section 2(d).
This presents an unusual but fascinating case of a famous brand's fan group successfully preventing someone else from relaunching that dead brand. In this case, the Board handed the Pierce-Arrow Society a win by interpreting the claim of "foster[ing] and preserv[ing] interest in Pierce Arrow -motor cars," as any Pierce-Arrow cars, rather than the antique Pierce-Arrow cars that were obviously originally intended. This case could allow other fan groups to preserve the cache of their favorite dead luxury brands.