Costa Del Mar Files Appeal From TTAB Confusion Ruling Re "EX FRAME" For Sunglasses
Costa Del Mar Sunglasses, Inc. has appealed to the CAFC (Appeal No. 05-1185, docketed January 14, 2005) from the TTAB's ruling sustaining a Section 2(d) opposition to registration of the mark EX-FRAME for "optical and sunglass frames." Oakley, Inc. v. Costa Del Mar Sunglasses, Inc., Opposition No. 91120006 (October 4, 2004) [not citable]. The Board found Applicant's mark likely to cause confusion with the registered mark X METAL for sunglasses.
"To rule otherwise would be to allow parties to claim a 'family' of marks which consist of different single syllable words (e.g., pro, ex); or based on the use of a few single letters, essentially grant a party rights to the entire alphabet of single letters."In any case, there was insufficient evidence showing use of these marks together as a "family."
The Board therefore turned to Oakley's individual marks, and focused particularly on Oakley's X METAL mark for sunglasses. The Board found Cost Del Mar’s sunglass frames to be substantially identical to Oakley's sunglasses (and Applicant did not argue otherwise). Since neither the opposed application nor Oakley's registration included any limitations as to channels of trade or purchasers, the Board assumed that they are the same.
As to the marks, the Board noted that, when the goods at issue are virtually identical, the degree of similarity of the marks necessary to support a likelihood of confusion finding is lessened. The Board found the marks to be similar in sound, appearance, connotation. and commercial impression:
"both . . . consist of a beginning which is 'X' or 'EX' followed by a generic or highly descriptive word. Thus the beginning sounds are identical and the structure of the marks is similar. The connotation of both marks is that of 'x' as it relates to the younger generation such as 'x' games and 'extreme sports.'"In conclusion, the Board noted that if it had any doubt in this case, it must resolve that doubt in favor of the registrant.
Although a rather formulaic application of the du Pont factors led the Board to a likelihood of confusion finding, the TTABlog's view is that EX-FRAME and X METAL are just not close enough to cause confusion. No wonder Oakley was pushing a "family of marks" argument.