FisherBroyles attorneys win TTAB precedential decision in trademark opposition proceeding

WASHINGTON—(December 5, 2024)—Roger Browdy, Ronni Jillions, and Aoi Nawashiro, partners at FisherBroyles, LLP, the world’s first and one of the largest distributed law firms and the only nontraditional law firm to be ranked in The Am Law 200, recently won a precedential decision in a trademark opposition proceeding at the United States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB). Browdy, Jillions, and Nawashiro joined the firm’s patent group in Washington D.C. in September.

In the opinion issued by Administrative Trademark Judge Lawrence T Stanley Jr in The Heil Co. v. Tripleye GmbH, the Board dismissed The Heil Co.’s opposition to the registration of the mark TRIPLEYE, finding confusion with the registered mark 3RD EYE to be unlikely. Using the DuPont factors, the TTAB compared and analyzed the companies’ marks, market presence, and goods and services.

The Board determined the difference between the marks to be the most important factor in its decision. As summarized in Stanley’s opinion, the Board disclosed that “in view of these differences in connotation and commercial impression, along with the differences in sight and sound, the marks are more dissimilar than similar.”

Stanley’s opinion continued: “We find the dissimilarity of the marks … to be pivotal here insofar as it, in conjunction with the conceptual weakness of the only shared element of the parties’ marks (i.e., “EYE”), outweighs the other … factors. The respective marks overall are different enough that even when used on identical goods and services in overlapping trade channels, consumers likely would not be confused into believing that they emanate from the same source.”

Tripleye GmbH specializes in the development of Level 4 and Level 5 autonomous vehicle technology. In September 2021, the Berlin-based company filed a Request for Extension of Protection on the Principal Register for its international registration for the mark TRIPLEYE. In July 2022, The Heil Co. filed a Notice of Opposition opposing registration of the applied-for mark on the grounds of priority and likelihood of confusion with the mark 3RD EYE under Section 2(d) of the Trademark Act.

“Our team is thrilled to deliver this win to our client in defense of their trademark following a hard-fought opposition proceeding, and we are equally pleased to have received this news as partners of FisherBroyles, which our team joined just two months ago,” said Browdy.

T.J. DoVale, managing partner for FisherBroyles’ IP practice group, added: “FisherBroyles’ IP practice group is composed of nearly 70 high-caliber attorneys, among the most respected and talented in the industry for their knowledge, experience, and capabilities. We’re proud of Roger, Ronni, and Aoi for earning this precedential decision on behalf of their client and are grateful they’ve joined our team.”

The case is United States Patent and Trademark Office Trademark Trial and Appeal Board Opposition No. 91277359.

FisherBroyles was founded in 2002 by James Fisher and Kevin Broyles.

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