Diesel S.p.A. opposed an application to register MISEL DISEL for "smooth shave enhancer, namely, pre-shave liquid," claiming a likelihood of confusion with its registered mark DIESEL for, inter alia, pre- and after shave creams and lotions. The goods are essentially identical, or at least closely related, but what about the marks? How do you think this came out? Diesel S.p.A. v. Misel Disel, LLC, Opposition No. 91225389 (November 5, 2018) [not precedential] (Opinion by Judge David Mermelstein).

The Marks:The Board spent little time discussing the similarity or dissimilarity of the marks. It found the word DISEL to be "highly similar" to the word DIESEL: they look similar and applicant' mark is likely to be pronounced the same as DIESEL because it looks like a misspelling of the common word"diesel." Although applicant's mark begins with MISEL, and the first word in a mark is the portion that consumers notice first [DUH! - ed.], MISEL is itself similar to DISEL and invites a rhyming pronunciation of MISEL similar to "diesel:" i.e., mee-zul dee-zul. Because of the rhyme, MISEL does not creat a separate commercial impression from DISEL. The Board concluded that the marks are "substantially similar."

The Goods: The Board spent more time coming to the conclusion that the goods are in part identical or closely related. Applicant's goods comprise a "smooth shave enhancer," whatever that is. The Board found that it is encompassed by opposer's "pre- and after shave creams and lotions." But even if the goods did not overlap, they are closely related.

The Board presumed that the overlapping goods travel in the same, normal trade channels to the same classes of consumers. The items are relatively low-priced and would be purchased "without such careful consideration as would alleviate confusion."

Applicant argued that the fame of the DIESEL mark (for apparel) works against Opposer, but the Board pointed out that the fame of a mark is never a negative factor: "no mark is too famous to be confused." Indeed, the more well-known a mark, the easier it will be to find a likelihood of confusion under the du Pont factors. However, the Board agreed with applicant that the fame of DIESEL in the apparel field does not suggest that purchasers are more likely to believe that Opposer is the source of applicant's products.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.

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