HOG family of marks cuts HAWG application short

The Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office has upheld the consolidated oppositions filed by Black & Decker Corp (B&D) against the registration of two HAWG marks for wet and dry vacuum cleaners by Emerson Electric Co. The board found that (i) B&D's extensive advertising and sales had established a family of marks consisting of the name Hog, preceded by a word indicating the use of the related product, and (ii) consumers were likely to view marks following this pattern as having a common origin.

B&D had clear priority based on numerous registrations for HOG marks, including:

• EDGE HOG for lawn and garden edgers;
  
  
• GRASS HOG for grass trimmers;
  
  
• HEDGE HOG for hedge trimmers;
  
  
• LAWN HOG for lawn mowers;
  
  
• LEAF HOG for leaf blowers; and
  
  
• LOG HOG for chainsaws.

B&D also holds registrations for HOG POWER and IS THERE A HOG IN YOUR YARD? for garden tools.

In addition, B&D had extensively advertised and promoted its HOG marks together, including use of slogans such as "Black & Decker Hog Family" and "A family of hogs on the loose in your yard". Emerson did not seriously dispute B&D's claim to a family of marks, but argued that the difference in spelling, coupled with differences in the goods, were sufficient to avoid any likelihood of confusion in view of the derivation of the HAWG marks from a university's symbol said to have been their inspiration, and also in view of some third-party uses and registration of other HOG marks.

The TTAB based its decision on the factors set forth in In re E I duPont de Nemours & Co (476 F2d 1357, 177 USPQ 563 (CCPA 1973)), finding that:

• the pattern of use clearly established the family of HOG marks preceded by a suggestive term;
  
  
• Emerson's marks would be likely to be viewed as members of the family, despite the difference in spelling;
  
  
• the goods were sufficiently related to contribute to the likelihood of confusion; and
  
  
• the channels of trade and conditions of purchase also favoured B&D.

Although the board found that the HOG marks were not famous, it held that they were sufficiently strong to prevail over Emerson's evidence of third-party uses and registrations of other HOG marks for somewhat related goods.

In sustaining the oppositions, the board stated that:

"the evidence . . . with respect to third-party use of HOG marks does not outweigh the significant amount of sales of [B&D]'s HOG products and the expenditures by [B&D] in advertising and promoting its HOG family of marks."

Thomas S Small, Birch Stewart Kolasch & Birch LLP, Los Angeles