Bentley Motors Ltd.

Trademark Trial and Appeal Board

Dec 3, 2013

No. 85325994 (T.T.A.B. Dec. 3, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
December 3, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bentley Motors Ltd.
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Serial No. 85325994

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Brian R. McGinley of SNR Denton US LLP for Bentley Motors Ltd.

Charles L. Jenkins, Jr., Trademark Examining Attorney, Law Office 105 (Thomas
G. Howell, Managing Attorney).
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Before Cataldo, Bergsman, and Lykos, Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On May 20, 2011, Bentley Motors Ltd. (“applicant”), a United Kingdom
corporation, filed an application to register the mark BENTLEY on the Principal
Register, in standard character format,1 for “Perfume, cologne, aftershave,
deodorants, cosmetics, hair lotions, soaps, personal hygiene products” in
International Class 3 and “Articles of glass, crystal, earthenware and porcelain;

1 Serial No. 85325994, filed May 20, 2011 pursuant to Section 1(b) of the Trademark Act
and a claim of priority pursuant to Section 44(d) based on a European Community foreign
application. Said foreign application matured into registration on October 24, 2011; on May
29, 2012, applicant submitted a digitized image of a certified copy of the foreign registration
(European Community No. 009984031).
Serial No. 85325994

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bottles and containers of glass; decanters; perfume bottles” in International Class
21. In the application, applicant claimed ownership of the following U.S.
registrations and others:
U.S. Registration No. 2985659 for the mark BENTLEY in stylized
format for “automobile financing services, namely, credit consulting
and loan services for retail purchase and/or lease of automobiles” in
International Class 36;2

U.S. Registration No. 645703 for the mark BENTLEY in stylized
format for “internal combustion engines and parts thereof” in
International Class 23;3 and

U.S. Registration No. 646403 for the mark BENTLEY in stylized
format for “automobile and structural parts thereof” in International
Class 19.4

The Trademark Examining Attorney refused registration of applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the following registered marks owned by
different entities:5
BENTLEY (stylized) for “beverage glassware, drinking mugs, ceramic
drinking steins and tankards, ceramic drinking cups” in International Class
21;6

BENTLEY UNIVERSITY (standard character format) for “beverage
glassware, drinking mugs, ceramic drinking steins and tankards, ceramic
drinking cups” in International Class 21;7

2 Section 8 and 15 affidavits accepted and acknowledged.
3 Third renewal.
4 Third renewal.
5 Registration No. 2994043, owned by Bentley College, for the mark BENTLEY COLLEGE
for “beverage glassware, drinking mugs, ceramic drinking steins and tankards, ceramic
drinking cups” was cancelled pursuant to Section 8.
6 Registration No. 2994045, owned by Bentley University; Section 8 and 15 affidavits
accepted and acknowledged.
Serial No. 85325994

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BENTLEY ORGANIC (standard character format) for “[p]roducts, made
substantially in part of organic ingredients, used for personal care, namely,
non-medicated soaps, cosmetics, hair lotion, shampoo, non-medicated
toiletries, and non-medicated skin care preparations” in International Class
3;8

BENTLEY ORGANIC (stylized) for “[s]oaps; perfumery; essential oils;
cosmetics; hair lotion; medicated soap; shaving soap; shampoo; bar soap;
liquid soap; baby soap; cleaning preparations; non-medicated handwash in
the nature of hand soap, body wash, shower gel, bath foam, bath foam for
babies, facial cleansers; hair conditioner; baby oil; body lotion; skin creams;
face and skin creams; body butter; stretch mark creams; lip balms; nappy
creams in the nature of non-medicated diaper rash creams; after-sun lotions;
all the aforesaid goods being for personal care use; preparations for cleaning
bathrooms; non-antibacterial non-disinfecting bathroom cleaners;
preparations for cleaning showers; preparations for use in cleaning showers;
non-antibacterial non-disinfecting shower cleaners; preparations for cleaning
household glass; cleaning agents for household glass; household glass
cleaners; household glass cleaning preparations; preparations for cleaning
household surfaces; household surface cleaners; preparations for cleaning
household hard surfaces; cleaners for use on toys; baby wipes; baby wipes for
cleaning purposes; baby wipes for cleaning purposes impregnated with
cosmetic, moisturizing lotions; pre-moistened wipes for cosmetic purposes;
pre-moistened wipes impregnated with a cosmetic lotion; pre-moistened
wipes impregnated with a moisturizing lotion; pre-moistened cosmetic wipes;
pre-moistened wipes for babies, infants and/or children in the nature of baby
wipes; pre-moistened cosmetic wipes; paper wipes impregnated with cosmetic
preparations; wipes and tissues impregnated with cleaning preparations,
including for surfaces; pre-moistened tissues; wipes impregnated with
cleaning preparations, cosmetic products, and/or moisturizing lotions;
household cleaning products in the nature of cleaning preparations;
preparations for cleaning kitchens; preparations for washing crockery;
washing-up liquids; preparations for cleaning textiles; powders for cleaning
clothes; powder for washing clothes; liquids for cleaning clothes; washing
liquid for clothes; fabric softeners; laundry fabric conditioners; all of the
aforesaid goods being made in whole or substantial part from organic
ingredients” in International Class 3 and “Medicated skin creams, including

7 Registration No. 3349002, owned by Bentley University; Section 8 and 15 affidavits
accepted and acknowledged.
8 Registration No. 3799891, owned by Thos. Bentley & Son Limited; with a disclaimer of
“ORGANIC.”
Serial No. 85325994

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medicated facial skin creams; hand and skin sanitizers; chemical
preparations for sanitary purposes, namely, household sanitizers; sanitizing
preparations for household use; antibacterial bathroom cleaner; antibacterial
shower cleaner; sanitizing preparations and disinfecting cleaners for use on
toys; medicated lip balms; medicated nappy cream in the nature of medicated
diaper rash cream; sanitary preparations for medical use; medicated pre-
moistened wipes; medicated wipes and antiseptic wipes impregnated with
chemicals; sanitizing wipes; sanitizing wipes for surfaces; pharmaceutical
preparations, namely, vapor-releasing formulations to aid breathing; all of
the aforesaid goods being made in whole or substantial part from organic
ingredients” in International Class 5.9

Following a request for reconsideration which was denied, applicant appealed
the examining attorney’s final refusal to register the application. Concurrent with
the request for reconsideration, applicant filed a timely amendment to the
identification of goods in both international classes to restrict the channels of trade
to the following: “…all the foregoing sold exclusively through authorized
vehicle dealers and authorized vehicle service outlets.” The examining
attorney accepted the amendment but adhered to the final refusal to register.10 We
now consider the fully briefed appeal.
I. Procedural History – Identification of Goods
Before discussing the merits of the appeal, the Board is compelled to

9 Registration No. 4017737, owned by Thos. Bentley & Son Limited; with a disclaimer of
“ORGANIC.”
10 In maintaining the final refusal, the examining attorney submitted additional evidence
consisting of third-party registrations purporting to show the relatedness of applicant’s and
registrants' goods. Such materials fell outside the scope of the Board’s remand order and
therefore have not been considered. Nonetheless, even if we were to consider this newly
submitted evidence, it would not alter our determination insofar as the third-party
registrations are not relevant to the critical issue before us -- the similarity or dissimilarity
of established, likely to continue trade channels (see discussion below).

Serial No. 85325994

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comment on the ex parte history of the involved application with regard to the
identification of goods. If an issue not previously raised is a defect that can easily
be corrected by the applicant, the Board may elect to decide the issue on appeal, and
include in its decision a recommendation that applicant voluntarily correct the
defect if it prevails on the appealed issue. See TBMP § 1217 (3d ed. rev. 2 2013) and
cases cited therein.
In response to the examining attorney’s determination that the identification
of goods as originally filed was in part indefinite, on March 9, 2012, applicant
proposed the following amendment as set forth below:
Perfume, cologne, aftershave, personal deodorants, cosmetics, hair lotions,
soaps in International Class 3; and

Articles of glass, namely, drinking glass, busts of crystal, decorative
centerpieces of crystal, desktop statuary made of crystal, earthenware mugs,
porcelain mugs, bottles, sold empty, containers for household uses, namely,
glass bulbs, decanters, perfume atomizers, sold empty” in International
Class 21 (emphasis added).

The examining attorney found the amended identification of goods to be acceptable
and the amendment was entered. See Office Action dated July 1, 2012. With its
subsequent request for reconsideration, applicant filed a second amendment to its
identification of goods which was accepted and entered by the Office as indicated
below:
Perfume, cologne, aftershave, personal deodorants, cosmetics, hair lotions,
soaps, all of the foregoing sold exclusively through authorized dealers and
authorized service outlets in International Class 3, and

Articles of glass, namely, perfume bottles and perfume decanters, all of
the foregoing sold exclusively through authorized dealers and authorized
service outlets in International Class 21 (emphasis added).
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As noted above, this identification was modified again on remand to add the
qualifying language that the authorized dealers and service outlets pertain to
vehicles.
It has now come to the Board’s attention that the identification of goods for
Class 21 as it currently reads is indefinite and constitutes an impermissible
expansion outside the scope of the goods as originally amended because (1) the
terminology “sold empty” was deleted, and (2) the term “perfume bottles” is broader
in scope than “perfume atomizers.” See Trademark Rule 2.71(a) (“The applicant may
amend the application to clarify or limit, but not to broaden, the identification of
goods and/or services.”). To rectify this, the Board recommends that applicant
amend the identification of goods in International Class 21 to the following:
Articles of glass, namely, perfume atomizers and perfume decanters
sold empty, all of the foregoing sold exclusively through authorized vehicle
dealers and authorized vehicle service outlets (emphasis added).

II. Section 2(d) Refusal
The Board will now consider the refusal to register. We base our
determination under Section 2(d) on an analysis of all of the probative evidence of
record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
“Not all of the du Pont factors are relevant to every case, and only factors of
significance to the particular mark need be considered.” In re Mighty Leaf Tea, 601
F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010).
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In arguing against the examining attorney’s refusal to register, applicant
relies heavily on the third and fourth du Pont factors, namely the similarity or
dissimilarity of established, likely to continue trade channels and the conditions
under which, and buyers to whom, sales are made. In particular, applicant contends
that the amendment restricting the trade channel for applicant’s goods exclusively
to authorized vehicle dealers and authorized vehicle service outlets will obviate any
likelihood of confusion. As applicant argues in its appeal brief, page 4:
Applicant’s registration seeks to cover goods promoted and sold under
the BENTLEY mark offered exclusively through authorized dealers
and service outlets. Essentially products that will be available through
the very tightly-knit Bentley circle. Bentley dealers and service outlets
are devoted to the distribution and sale of luxury vehicles such as Rolls
Royce® and Bentley® brand automobiles and related parts and
accessories, and they cater to a niche, affluent clientele base.

In addition, applicant argues that because its products are sold via Bentley and
Rolls Royce authorized dealerships and service outlets, such consumers are well
aware that they are purchasing ancillary goods. As such, applicant contends that
the sale of its products exclusively in niche portions of the luxury vehicle market
results in distinct, non-overlapping trade channels and consumers when compared
to those of registrants’ products.
The examining attorney disagrees, relying on the proposition that, if an
identification describes the goods without any limitation as to trade channels, it is
presumed that the goods move in all normal channels of trade for those goods. For
each of the involved registrations, this indeed is true. Thus, in accordance with our
well established case law, because none of the registrations include any restrictions
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regarding channels of trade, we must presume that such goods are sold in the
ordinary or normal trade channels. See Packard Press, Inc. v. Hewlett-Packard Co.,
227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000) (“When the registration does
not contain limitations describing a particular channel of trade or class of customer,
the goods or services are assumed to travel in all normal channels of trade.”). See
also In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v.
Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958).
There is nothing in the record, however, to suggest that the ordinary trade
channels for registrants’ goods include “authorized” vehicle dealers and vehicle
service outlets. Put another way, applicant’s goods are marketed solely and
exclusively through dealers and service outlets for Bentley and Rolls Royce
automobiles. The record does not support the proposition that the goods identified
in the cited registrations normally move in these channels of trade, notwithstanding
that they do not recite any trade channel limitations. The burden is on the Office to
show that the ordinary trade channels for registrants’ goods overlap with
applicant’s very limited trade channel. For this reason, we find that the trade
channels, as now identified in applicant’s application, are distinct and do not
overlap with the ordinary channels of trade for the identified goods.
In a particular case, any of the du Pont factors may play a dominant role. In
re E. I. du Pont de Nemours & Co., 177 USPQ at 567. In fact, in some cases, a single
factor may be dispositive. Kellogg Co. v. Pack'em Enterprises Inc., 951 F.2d 330, 21
USPQ2d 1142, 1145 (Fed. Cir. 1991) (“we know of no reason why, in a particular
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case, a single du Pont factor may not be dispositive”). In the present case, the lack of
evidence showing an overlap in the channels of trade for applicant's and registrants’
products is pivotal. See, e.g., In re HerbalScience Group LLC, 96 USPQ2d 1321,
1324 (TTAB 2010) (“There is nothing in this record to show that a normal channel
of trade for dietary and nutritional supplements is that they are sold to the
companies that would purchase applicant's identified goods.”). Because we find that
the amendment to restrict applicant’s channel of trade means “there is virtually no
opportunity for confusion to arise” (Id. at 1324), we need not consider the other du
Pont factors discussed by the examining attorney and applicant. See id. See also,
Kellogg Co. v. Pack'em Enterprises Inc., 921 USPQ2d at 1145 and In re Sela Prods.
LLC, 107 USPQ2d 1580, 1589 (TTAB 2013). Accordingly, we find that the Office has
not satisfied its burden of proving that confusion is likely.
DECISION: The Section 2(d) refusal is reversed. Insofar as applicant has
prevailed on the issue on appeal, the file will be forwarded to the examining
attorney for further amendment of the identification of goods in accordance with the
above discussion.