IP Law Daily, TRADEMARK—TTAB: NOMAD marks allowed to coexist on very different goods, (Sep 25, 2024)

By Kevin M. Finson

The mark NOMAD for barbecue grills was not likely to be confused with opposer’s nearly identical mark for cell phone accessories.

The stylized mark NOMAD was allowed to be registered for barbecue grills despite being nearly identical to an opposer’s registered mark NOMAD for power cables, cell phone accessories, and related goods because the goods were so disparate that confusion was not likely to occur, the Trademark Trial and Appeal Board has decided in dismissing the opposition (Nomad Goods, Inc. v. Nomad Grill LLC, No. 91273170 (T.T.A.B. Sept. 18, 2024)).

Nomad Grill, LLC (Nomad Grill) sought registration on the Principal Register of a mark consisting of the stylized word NOMAD within a rounded rectangle outline for use with “barbecue grills” in International Class 11. Nomad Goods, Inc. (Nomad Goods) opposed the registration on the ground of likelihood of confusion with five registrations for the mark NOMAD in standard characters, all of which were for power cables, cell phone accessories, wallets, and similar goods in International Classes 9, 14, and 18. After briefly noting that the pleaded registrations established Nomad Goods’ entitlement to a statutory cause of action and priority, the Board considered the DuPont factors for which there was evidence of record.

Similarity of marks. The Board found the marks were essentially identical. The registrations being in standard character form meant they could be displayed in the distinctive font sought by the application, and the design element of a rounded rectangle surrounding the word was minimally distinctive.

Similarity of goods. The Board found that there was essentially no relation between the barbecue grills identified in the application and the cell phone paraphernalia identified in the cited registrations. Nomad Goods argued that barbecue grills would be natural expansion for its offerings, but there was no evidence to support this claim apart from a conclusory assertion by one of Nomad Goods’ corporate officers.

Trade channels. Both the application and the registrations lacked any limitations on trade channels and both were sold in general brick and mortar stores, so there was some possibility of overlap.

Purchasers. Nomad Goods’ COO testified that its consumers were “people having or espousing a mobile lifestyle.” Nomad Grill’s CEO testified that its consumers were individuals “looking for outdoor cooking equipment either for use at home or on the go.” The Board found that this evidence was sparse but suggested that consumers overlapped to some indeterminate degree, and the goods were neither impulse purchases nor inherently expensive, and would expect the ordinary level of consumer care.

Strength of opposer’s marks. Nomad Goods argued that its mark was arbitrary, but the Board found it was suggestive in light of Nomad Goods’ own statement about its consumers; that they espouse a “mobile lifestyle.” There was not enough evidence in the record for the Board to reach any conclusions about commercial strength.

Actual confusion. There was no evidence of actual confusion and the parties disputed whether there had been enough opportunity for confusion for that factor to be meaningful. The Board found that there was no evidence in the record from which it could determine whether there was a meaningful opportunity for confusion, so this factor was neutral.

The Board considered the remaining factors neutral. Balancing the factors, the Board concluded that the goods at issue were so different that notwithstanding the near identity of the marks, consumers were unlikely to be confused. The Board dismissed the opposition.

The Case is Opposition No. 91273170.

Judge: Casagrande, T.

Attorneys: Steven S. Sereboff (Socal IP Law Group LLP) for Nomad Goods, Inc. William W. Stroever (Cole Schotz, PC) for Nomad Grill LLC.

Companies: Nomad Goods, Inc.; Nomad Grill LLC

Cases: Trademark USPTO