(1) CALIFORNIA BEEMERS is the same as, or a close approximation of, BMW’s previously used name or identity; (2) CALIFORNIA BEEMERS would be recognized as such, in that it points uniquely and unmistakably to BMW; 3) BMW is not connected with Applicant’s activities under the CALIFORNIA BEEMERS mark; and 4) BMW’s name or identity is of sufficient fame or reputation that when Applicant uses CALIFORNIA BEEMERS in connection with its services, a connection with BMW would be presumed.
Dictionary definitions referred to “BEEMER” as an informal term for an automobile manufactured by the German company BMW. In short, they confirmed that “Beemer” has only one meaning: BMW vehicles. Numerous media articles also referred to BMW cars as “Beemers.”
Applicant argued that “Beemer” is not the same as BMW’s name or identity because BMW does not itself use the term. Irrelevant, said the Board. For example, PRINCESS KATE was found to falsely suggest a connection with Kate Middleton although she does not use the term. Whether BMW has objected to applicant’s use of the term is also irrelevant.
Applicant’s own website made it clear that CALIFORNIA BEEMERS points uniquely and unmistakably to BMW. [See illustration above from Applicant’s specimen of use]. In fact, applicant promotes its “BMW Service.”
Applicant pointed to third-party registrations for BIMRS & Design, BIMMER SPECIALIST, BimmerFix, and BEEMERVILLE, for goods and services related to autos and motorcycles, but the Board found them to be of no probative value. There was no proof that the marks are actually in use and no evidence that the owners were not affiliated with BMW. Three of the four registrations do not include the word BEEMER. And in any case, the Board is not bound by the issuance of a registration for some other mark and must make its decision on the record before it.
In sum, CALIFORNIA BEEMERS points uniquely and unmistakably to BMW. “Applicant’s specimen and all of the evidence reveal that the term BEEMER points to nothing else.”
Applicant conceded that it is not connected with BMW. And so the final issue was whether BMW is sufficiently famous that consumers would presume a connection with BMW when the CALIFORNIA BEEMERS mark is used. In this context, unlike in the dilution or likelihood of confusion contexts, “the key issue is whether the name per se … as used would point uniquely to the person or institution.” The Board concluded from the record evidence that CALIFORNIA BEEMERS would do so.
. . . Applicant’s use of CALIFORNIA BEEMERS would point automobile buyers and owners of automobiles in need of repair uniquely to BMW. Indeed, the record establishes BMW’s fame in the United States for cars, and given Applicant’s use of BMW’s nickname BEEMER for car sales and car repair, “we may draw an inference that applicant intends to create a connection with” BMW, and that the public would make the false association.
Conclusion: The examining attorney established that use of applicant’s mark would falsely suggest a connection with BMW. And so the Board affirmed the refusal to register.
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TTABlog comment: I try to avoid using the term “applied-for mark.” One does not apply for a mark, but for a registration. This reminds me of the common misuse of the word “trademark” as a verb.
Text Copyright John L. Welch 2019.