IP Law Daily, TRADEMARK—TTAB: Proposed MAC TÍRE CLOTHING mark was likely to be confused with Volvo Truck’s registered MACK mark, (Mar 23, 2023)

By Kevin M. Finson, J.D.

U.S. consumers were unlikely to understand that “mac tire” to was the Irish word for “wolf.”

Volvo Truck Corporation’s opposition to registration of the mark MAC TÍRE CLOTHING was sustained by the Trademark Trial and Appeal Board because the mark would be seen as similar to Volvo’s registered mark MACK used with in part identical goods. The proposed mark Mac Tíre was the Irish word for “wolf,” but would likely be seen by an American audience as similar to MACK (Volvo Truck Corp. v. Mac Tíre Clothing LLC, March 13, 2023, Bergsman, M.).

Mac Tíre Clothing, LLC (Mac Tíre) sought registration on the Principal Register of the standard character mark MAC TÍRE CLOTHING for use with a variety of clothing and apparel in International Class 25. Volvo Truck Corporation (Volvo) filed a notice of opposition on the ground of likelihood of confusion with Volvo’s registered marks MACK and MACK TRUCKS, registered for use with, among other things, clothing and apparel in International Class 25, and on the ground that Mac Tíre lacked a bona fide intent to use the mark as of the date of filing. The Board briefly noted that entitlement to a statutory cause of action and priority were established by Volvo’s registrations.

Dilution. Volvo had claimed in its pleadings that its MACK trademark for vehicles was famous, but did not raise a dilution claim until its brief. Mac Tíre argued in its brief that the issue of dilution was not pleaded and therefore should not be considered. The Board agreed with Mac Tíre and did not address Volvo’s dilution claim.

Likelihood of confusion. The Board then turned to the issue of likelihood of confusion and addressed the DuPont factors for which there was evidence of record.

Similarity of the goods. Both Mac Tíre and Volvo listed shirts and hats as specific items of clothing to be sold under their marks, so the goods were at least partially identical and were otherwise related.

Channels of trade and classes of consumers. Because the goods were identical in part, the board presumed the channels of trade and classes of consumers were the same.

Conditions of sale. Because the parties described the goods generally as clothing, without any limitations as to price or quality, the board presumed that they would include inexpensive items which might be purchased on impulse.

Strength of opposer’s marks. To show the weakness of Volvo’s marks, Mac Tíre introduced evidence of several other MACK or MAC formative marks registered with the USPTO and specifically registered in International Class 25. Volvo argued that its mark was famous and therefore entitled to a broad scope of protection, and introduced extensive evidence of market share and long history of use dating back to 1900. Although the word “Mack” is conceptually weak because it may be considered a surname, which led Volvo to register it under the provisions of Section 2(f), the evidence showed Volvo's MACK mark to be commercially strong in connection with trucks, and entitled to a broad scope of protection. The Board held that Volvo’s showing of fame in the context of trucks also entitled Volvo to some protection in the area of clothing because it was common knowledge that such marks were frequently licensed on collateral products such as clothing and apparel.

Similarity of the marks. Mac Tíre argued that its mark was the Irish word meaning “wolf” and was phonetically distinct from the MACK mark because it was pronounced as <mok cheer-a>. However, the board noted that there were only approximately 20,950 speakers of Irish Gaelic in the United States, so a large portion of the relevant consumers would presumably not recognize it as an Irish word and would instead pronounce it the same as MACK. The board held that the marks would be perceived as very similar in look, sound, and commercial impression.

Balancing the factors, the Board held that there was a likelihood of confusion and sustained the opposition. The board did not reach Volvo’s arguments on the issue of bona fide intent to use.

The Case is Opposition No. 91264810.

Attorneys: Leigh Ann Lindquist (Sughrue Mion, PLLC) for Volvo Truck Corp. Xavier Hailey (Hailey Law PLLC) for Mac Tíre Clothing LLC.

Companies: Volvo Truck Corp.; Mac Tíre Clothing LLC

Cases: Trademark USPTO