TTAB dismisses Rolex’s claim of likelihood of dilution by blurring

United States of America
In Rolex Watch USA Inc v AFP Imaging Corp (Opposition 91188993, December 5 2011), the Trademark Trial and Appeal Board (TTAB), in a precedential opinion, has rejected Rolex Watch USA Inc’s opposition against AFP Imaging Corp Inc’s application to register the trademark ROLL-X for “x-ray tables for medical and dental use”, holding that Rolex had failed to establish a likelihood of dilution of its famous ROLEX trademark by blurring. The TTAB further dismissed Rolex’s claim of alleged lack of good-faith intent to use the mark applied for.

The TTAB found that the mark ROLEX was famous, as required for a dilution by blurring claim. The TTAB relied on evidence including:
  • longstanding continuous use since registration in 1915;
  • lack of third-party usage or registration of marks similar to ROLEX;
  • extensive advertising expenditures and promotion of the ROLEX mark to the general public;
  • annual sales figures of hundreds of millions of dollars over 25 years; 
  • “intense” media attention equating the ROLEX trademark with status and reliability.
As further required for a dilution by blurring claim, the TTAB found that the ROLEX mark was famous prior to 2008, before AFP Imaging filed its application for ROLL-X.

In evaluating whether the ROLL-X mark was likely to cause dilution by blurring the distinctiveness of the ROLEX mark, the TTAB considered the six non-exhaustive factors set forth in the Lanham Act (15 USC § 1125(c)(2)(B)(i)-(vi)).
 
As to the first factor (the similarity between the two marks), the TTAB noted that the correct test was the degree of similarity between the marks as to appearance, sound, connotation and commercial impression, as clarified by Nike v Maher (100 USPQ 1018 (TTAB 2011)). The TTAB found that the differences in the marks in terms of appearance, meaning and commercial impression greatly outweighed any similarity in pronunciation. The TTAB noted that, due to the applicant’s mark having the 'roll' and 'X' elements separated by a hyphen, consumers were likely to interpret the mark as referring to the word 'roll', having the English meaning “to move on wheels”, and suggesting the term 'x-ray'. Thus, the first factor favoured the applicant.
 
The TTAB found that the second, third and fourth factors (ie, the inherent distinctiveness of the ROLEX mark, Rolex's substantially exclusive use of the ROLEX mark and the degree of recognition of the ROLEX mark) favoured Rolex.
 
As to the fifth factor (whether AFP Imaging intended to create an association with the ROLEX mark), the TTAB found that Rolex had failed to submit any evidence demonstrating such an intent. Further, the TTAB noted that there was evidence that the ROLL-X mark was chosen based on the product’s moveable features, as well as an extension of the current product line marketed under the DENT-X trademark. Thus, this factor favoured the applicant.
 
The TTAB also found that the sixth factor (an actual association between the marks) favoured the applicant, in light of survey evidence presented by Rolex which targeted animal professionals responsible for purchasing x-ray tables. Of the 82% of respondents who noted that something came to mind when presented with the ROLL-X mark, 42% stated that Rolex/watch came to mind, while 32% stated that portable/movable/rolling came to mind. The TTAB found that the 42%, while showing an “actual association” between the marks, was insufficient to establish that the association would impair the distinctiveness of the ROLEX mark.
 
On balance, the TTAB found that the degree of similarity between the marks, the conflicting results obtained from the survey and the lack of evidence that the applicant intended to create an association with Rolex's mark outweighed the recognition, distinctiveness and substantially exclusive use of the ROLEX mark. Additionally, the TTAB noted that Rolex had failed to prevent evidence that its marketing power would be diminished by the ROLL-X mark. Based on these findings, the TTAB dismissed the likelihood of dilution by blurring claim. 
 
Lastly, the TTAB concluded that the applicant had a good-faith intent to use the ROLL-X mark at the time of filing the application. Although Rolex demonstrated, through the applicant’s discovery responses, that the latter did not possess any documentary evidence to support a good-faith intent to use, the applicant had submitted sufficient evidence to rebut the lack of documentary evidence. Specifically, the TTAB concluded that evidence that the applicant markets and promotes imaging products under the DENT-X line demonstrates that it has the capacity to market and manufacture the goods identified in the ROLL-X application.

Jennifer Theis, Brinks Hofer Gilson & Lione, Chicago 

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