IP Law Daily, TRADEMARK—TTAB: Nonprofit organization’s CARS mark not confusable with opposer’s CARS FOR KIDS common law mark, (Oct 6, 2022)

By Kevin M. Finson, J.D.

The marks were dissimilar and had coexisted for many years without any evidence of actual confusion.

A Texas-based charitable fundraising organization’s registered mark CARS FOR KIDS did not preclude registration of the mark CARS for fundraising services, the Trademark Trial and Appeal Board has decided, dismissing the Texas charity’s opposition based on likelihood of confusion. The marks were different enough that no actual confusion had arisen despite almost 20 years of co-existence and extensive nationwide advertising campaigns featuring both marks (American Can! Cars for Kids v. Charitable Adult Rides & Services, Inc., September 29, 2022, Pologeorgis, G.).

Charitable Adult Rides & Services, Inc. (Charitable) sought registration on the Principal Register of the standard character mark CARS for “charitable fundraising” in International Class 36. Charitable was in the business of providing ride services to elderly adults. Charitable provides access to turn-key car donation programs, and includes support services to aid in the growth and professional development of nonprofit organizations across the United States. Charitable indicated that CARS was intended to be an acronym of its business name.

American Can! Cars for Kids (American) filed an opposition to Charitable’s application, alleging a likelihood of confusion with its common law rights in the mark CARS FOR KIDS in connection with “business and charitable fundraising services broadly described as the arranging and organizing of charity sales and auction of automobiles and watercrafts for charitable fundraising purposes.” American employs a comprehensive marketing approach to raise funds for its education programs by receiving charitable donations of used automobiles and watercraft and reselling the vehicles at auction.

After briefly noting that American had established its entitlement to a statutory cause of action and priority through undisputed testimony and documentary evidence, the Board applied the Dupont factors for which there was evidence of record.

Similarity of services. Both Charitable and American identified "charitable fundraising" as their services, so the services were at least partially overlapping and legally identical. This factor weighed heavily in favor of a likelihood of confusion.

Channels of trade and classes of consumers. Because the services were legally identical and the application did not limit the channels of trade or consumers, the parties' channels of trade and classes of consumers were presumed to overlap. This factor also weighed heavily in favor of a likelihood of confusion.

Strength of the existing mark. The Board noted that there was essentially no evidence in the record, despite much attorney argument, for Charitable's contention that the CARS FOR KIDS mark was inherently weak. The Board accorded it the usual scope of protection for inherently distinctive marks. Reviewing American's extensive advertising campaigns across all 50 states, the Board held that the mark had achieved a moderate amount of commercial success and renown and was entitled to a normal scope of protection.

Similarity of the marks. Despite the shared term CARS, the Board held that the marks had different commercial impressions. The FOR KIDS element spoke to the purpose of American's use in a way that Charitable's mark CARS did not. Because the shared element CARS was highly descriptive of both parties’ services, this factor did not support a likelihood of confusion.

Actual confusion. There was no evidence of actual confusion submitted by the parties. The Board held that this was significant because the record showed both had engaged in nationwide advertising and fundraising for many years and had both raised hundreds of millions of dollars using their respective marks. Because there was ample opportunity for confusion to occur, but no evidence that it ever had occurred, this factor weighed against a likelihood of confusion.

Balancing the factors, the Board held that there was not a likelihood of confusion and dismissed the opposition.

The case is Opposition No. 91255836.

Attorneys: Christopher D. Olszyk, Jr., Ryan N. Miller, Cali R. Spota, and Brieanne E. Scully (Fox Rothschild LLP) for American Can! Cars for Kids. Katherine M. Hoffman and Own M. Praskievicz (Solomon Ward Seidenwurm & Smith LLP) for Charitable Adult Rides & Services, Inc.

Companies: American Can! Cars for Kids; Charitable Adult Rides & Services, Inc.

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