IP Law Daily, TRADEMARK—TTAB: ELECTRIC LAST MILE SOLUTIONS confusable with LAST MILE for vehicles, (Apr 18, 2023)

By Donielle Tigay Stutland, J.D.

While the Board affirmed the refusal to register the mark ELECTRIC LAST MILE SOLUTIONS for vehicles and electric vehicles, electric vehicle retail services and repair of electric vehicles, it reversed the refusal for batteries and chargers and for floor mats.

The Trademark Trial and Appeal Board (the “Board”) affirmed in part and reversed in part the refusal to register Applicant Mullen Automotive Inc.’s mark ELECTRIC LAST MILE SOLUTIONS for four classes of goods. The Examining Attorney had refused registration as to all goods on the grounds that the mark was likely to cause confusion with the previously registered mark LAST MILE for various types of vehicles in international Class 12. After weighing the relevant DuPont factors, the Board determined there was likely to be confusion with the registered mark LAST MILE for electric vehicles as to Applicant's goods and services in Class 12 (electric vehicles, vehicle covers, license plate holders), 35 (retail stores), and 37 (electric vehicle repair), but not likely as to the goods in Class 9 (batteries and charges) and Class 27 (vehicle floor mats) (In re: Mullen Automotive Inc., April 11, 2023, Bergsman, M.).

The Applicant sought registration of the mark ELECTRIC LAST MILE SOLUTIONS for: Batteries for electric vehicles; battery chargers for electric vehicles; charging stations for electric vehicles, in International Class 9; Electric commercial land vehicles; license plate holders; fitted and semi-fitted covers for vehicles, in International Class 12; Floor mats for vehicles, in International Class 27; Retail store services in the field of electric vehicles, in International Class 35; and Charging of electric vehicles; repair and maintenance of electric vehicles, in International Class 37. The Examining Attorney had refused registration on the grounds that the mark was likely to cause confusion with the previously registered mark LAST MILE for various types of vehicles in international Class 12. The Applicant appealed.

Strength of LAST MILE mark. The Board first looked at the strength of the registered mark LAST MILE. The Board began its analysis by noting that the mark LAST MILE has been registered without a claim of acquired distinctiveness, which therefore makes it inherently distinctive. However, looking at the dictionary definition of the term “last mile” it was noted that the term is defined by Merriam-Webster as “the walk of a condemned person to the place of execution,” which does not have descriptive or suggestive meaning when used in connection with the Registrant’s goods such as land vehicles, electrically powered motor vehicles, and four-wheeled battery powered and electric vehicles and component parts therefor, namely, four-wheeled motor vehicles. When breaking the two parts of the term up, it was noted that “Last Mile” can alternatively mean the final mile. As such, “Last Mile” used in connection with Registrant’s goods which are vehicles, suggests that Registrant’s vehicles “will get the driver the last mile or the last mile on an electric charge.”

The Applicant submitted evidence of numerous third-party registrations using the term “Last Mile,” however, the Board noted that the third-party registrations Applicant submitted are of “limited, if any, probative value because they do not cover the goods in the cited registration (i.e., vehicles).”

Similarity of the Marks. The Board next analyzed the similarity of the marks ELECTRIC LAST MILE SOLUTIONS and the mark in the cited registration is LAST MILE. The Board noted that the marks are similar in appearance, sound, connotation, and commercial impression because they share the term “Last Mile.” The Board also concluded that the term “Last Mile” is the dominant part of Applicant’s mark in part because Applicant has disclaimed the exclusive right to use the descriptive terms “Electric” and “Solutions.”

The Applicant argued that the marks are visually different because “Applicant’s Mark has four times as many syllables as Registrant’s marks, twenty-five letters versus eight letters, and two times as many words.” The Board rejected this argument, writing that “consumers do not focus on minutia but rather overall impressions.”

Similarity of Goods and Services. Next, the Board reviewed the similarity of the goods and services. The registered mark was for “land vehicles; electrically-powered motor vehicles; … four-wheeled battery powered and electric vehicles and components therefore, namely four-wheeled motor vehicles; components for all of the foregoing.” The Examining Attorney had argued that “Vehicles and their various accessories, parts, and attachments may be closely related goods such that the average person encountering the same or similar marks for such products is likely to be confused as to their source” and cited evidence from automobile dealerships and automobile manufacturers which sell and advertise both vehicles and vehicle parts.

The Board broke down its analysis and looked at the overlap between each class of goods offered. First, it looked at class 9 goods, as the Applicant was seeking to register ELECTRIC LAST MILE SOLUTIONS for batteries and chargers. The Examining Attorney had not submitted any evidence to show the relatedness of Applicant’s class 9 goods to the Registrant’s vehicles. Likewise, with respect to Applicant’s class 27 goods (floor mats), the Examining Attorney had not submitted evidence to show the relatedness of the goods or that the travel in the same trade channels or have the same class of consumers.

The Board did determine that the Applicant’s class 12 vehicles overlapped in part with the Registrant’s class 12 goods. Further, the Board concluded that the Applicant’s class 35 retail services for electric vehicles are offered through the same trade channels to the same customers as the Registrant's vehicles, and thus are inherently related. Finally, the Board found the class 37 repair services are offered through the same channels to the same customers as, and are clearly related to, the Registrant’s vehicles.

Types of Purchasers and Conditions of Sales. Finally, the Board analyzed the conditions of sale and the consumers to whom sales are made. The Applicant argued that vehicles “are not every day impulse-purchases;” they are “one of the most expensive purchases a consumer can make,” and as such customers will exercise a high degree of purchasing care. The Board rejected this argument, noting that first, the Applicant failed to submit any evidence for the argument and second, this argument is only relevant towards vehicles, not the less expensive auto parts. Nevertheless, the Board determined that depending upon which products and services it was analyzing, consumers may or may not exercise a high degree of purchasing care.

Weighing the relevant factors, the Board found that confusion is likely to occur in the marketplace with respect to some of the types of goods. The Board affirmed the refusal to register Applicant’s mark ELECTRIC LAST MILE SOLUTIONS for the goods in International Class 12 and the services in International Classes 35 and 37; however, the Board reversed the refusal to register Applicant’s mark ELECTRIC LAST MILE SOLUTIONS for the goods in Classes 9 and 27.

The case is Serial No. 90366095.

Attorneys: Kate A. Sherlock (Archer & Greiner, P.C.) for Mullen Automotive Inc. Won T. Oh for the USPTO.

Companies: Mullen Automotive Inc.

Cases: Trademark USPTO