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Aaron Thalwitzer

Swiss watchmaker Swatch AG has sued in Federal court to prevent a Louisiana company from trademarking its line of ‘Swap’ watches.

Swatch is seeking review of a final decision made by the Trademark Trial and Appeal Board (the “Board”), which dismissed Swatch’s opposition to another company’s attempt to register the ‘Swap’ mark.

The Board dismissed an opposition to registration of the mark SWAP in the stylized form shown below, for “watch faces, ribbon watch bands, slide pendants, and beaded watch bands.” The Board found the mark not merely descriptive of the goods, and not likely to cause confusion with or to dilute the registered mark SWATCH for watches, clocks, and parts.

Swatch’s lawyers failed to get some important testimony into evidence, which obviously could’ve made the difference. See Swatch AG v. Bernard, Opposition No. 91169312 (February 23, 2011). Inexcusably, Swatch submitted depositions of five witnesses on CD-ROM. Owever. The problem is pursuant to See Rule 2.126(b), CD-ROMS haven’t been accepted since 2007. Whoops!  The Board was totally harshing Swatches mellow and didn’t let the testimony in. Maybe Swatch recover from their lawyers’ malpractice policy.

Without the recorded depos, Swatch argued that statements made in Swap’s various depos regarding the meaning of “swap,” but the Board refused to accept the statements as admissions, instead construing the statements as:

. . . simply demonstrating a lack of understanding of the significance of descriptiveness versus suggestiveness as applied to applicants’ mark at a time when mere descriptiveness was not a ground for opposition in this proceeding.

The Board didn’t so much care for Swatch’s evidence pulled from a dictionary and websites, finding that ‘Swap’, at most, suggests interchangeability, a feature of the goods.

Swatch argued that the ‘Swatch’ mark is famous, which is fun but pointless without record evidence like, uh, testimony. Without testimony or any other evidence (except some print articles) to support its assertions regarding sales, advertising and length of use of the mark, Swatch was already fighting an uphill battle.

Unsurprisingly, the Board still found the goods to be partly identical they are watches, after all. The Board also presumed that they travel in the same, normal channels of trade for such goods. Identical goods don’t have to be as similar to support a finding of likely confusion. Even so, the Board found the marks to be “distinctly different in meaning.”

Common sense tells us as much. ‘Swap’ means that parts of the watch are interchangeable with other Swap watches. Consumers get this. It’s clear enough when you see the product. So, as applied ‘Swap’ is fairly distinct.

The similarities are just as obvious. The marks have the same three letters and are both brands of watches. Both marks end in a consonant.

That’s not enough. I’m not confused. Are you?

Furthermore, Swatch didn’t demonstrate that ‘Swatch’ is famous (even though most everyone knows it is). Therefore, the Board couldn’t find that the mark was diluted. So Swatch lost.

But, Swatch has had luck before, and in the Southern District of Florida, in which fellow Tactical IP author Scott Nyman and I were just admitted to practice.