TODAY’S TRADEMARK – SHELL

The origin of the Shell name can be traced back to the seashells that Marcus Samuel senior imported from the Far East during the late 19th Century. When his sons Marcus junior and Samuel were looking for a name for the kerosene that they were exporting to Asia, they chose Shell.

Plaintiffs Shell Trademark Management BV, Shell Oil Company and Equilon Enterprises LLC (collectively “Shell”) seek a preliminary injunction barring its franchisee, Defendant Canadian American Oil Company, from selling less expensive gas under its own Touchless brand at the same station in San Francisco where it sells Shell gas. Shell argues that Canadian’s sale of Touchless gas at the same station that prominently displays Shell’s famous trademarks, including on a large sign on a pole which also features a sign for the Touchless brand just underneath, infringes Shell’s trademarks. Canadian acknowledges that Shell’s marks are famous, but counters that the dissimilarity of its Touchless trademark to Shell’s and its use of disclaimers of any affiliation prevent consumer confusion. 

The complete absence of similarity between the Shell and Touchless marks, however, is crucial. The words, look and feel of the two marks differ sharply. As the Ninth Circuit recently stated in Brookfield: “The similarity of the marks will always be an important factor. Where the two marks are entirely dissimilar, there is no likelihood of confusion. `Pepsi’ does not infringe Coca-Cola’s `Coke.’ Nothing further need be said.”

The SHELL was assigned by the United States Patent and Trademark Office (USPTO), bearing registration number 0286178 on 8^thAugust, 1931.