Friday, March 11, 2005

TTAB Deems "ELLIS BLACK" Confusingly Similar to "PERRY ELLIS"

Pro se Applicant Stacey L. Ellis was called out on strikes in his attempt to register the mark ELLIS BLACK for various articles of clothing [BLACK disclaimed]. In an unconvincing decision, the Board found the mark likely to cause confusion with the mark PERRY ELLIS registered in several forms and combinations for a closetful of clothing items. PEI Licensing, Inc. v. Ellis, Opposition No. 91151870 (February 24, 2005) [not citable].

Perry Ellis (1940-1986)

As to the identified goods, the Board quickly found them to be either legally identical or otherwise closely related. Therefore they must be assumed to travel in the same channels of trade to the same class of customers -- despite Applicant's assertion that he intends to sell his products to "an ethnic consumer base, consisting of people whose body structure he describes as being the same as African-Americans, and that he intends to sell his goods in his own stores."

The Board then turned to a consideration of the marks at issue, noting that the degree of similarity necessary to support a conclusion of likelihood of confusion diminished when the marks would appear on virtually identical goods. It was here that the Board made some questionable calls in favor of Opposer.

The Board found PERRY ELLIS to "the only or dominant feature of opposer's marks, and ELLIS to be the dominant feature of applicant's mark," noting that Applicant disclaimed the word BLACK. Because they include the common element ELLIS, the Board reasoned, the marks in question "share a similarity in appearance and pronunciation." Moreover, the Board made the following dubious finding:

"[The marks] have a similar connotation in that ELLIS is clearly a surname in opposer's marks, and as used in applicant's marks [sic] it will appear to many consumers to be a surname as well. Because the word BLACK in applicant's mark describes the ethnic group to which the clothing is directed, the connotation of the mark is of ELLIS clothing which is specifically designed for a black audience."

Turning Applicant's own words against him, the Board made the following odd observation:

"As Applicant himself stated, his mark has the meaning that 'it's created by Ellis, you know, for the black body structure.' *** Although opposer's marks do not describe its goods as being for a specific ethnic clientele, the marks have a similar connotation, in that they indicate clothing from the ELLIS designer line, and specifically from PERRY ELLIS."

Opposer PEI managed, however, to hurl a few wild pitches before throwing a third strike. PEI claimed to own a "family" of PERRY ELLIS marks, but once again the Board was not buying: "opposer has not submitted any evidence to demonstrate that it has promoted its marks together, such that we can find that it has a family of PERRY ELLIS marks. Cf. J&J Snackfoods Corp. v. McDonald's Corp., 18 USPQ2d 1889 (Fed. Cir. 1991)."

PEI also claimed that the PERRY ELLIS marks are famous, but its proofs fell short: although PEI introduced testimony that the PERRY ELLIS marks have been in use since 1977, and submitted impressive sales and advertising figures, the testimony did not indicate which marks had been in use that long, nor did it specify what portion of sales and advertising involved the particular PERRY ELLIS marks asserted here. Nonetheless, the Board did find PEI's marks to be "strong marks."

In sum, the Board found all of the applicable DuPont factors to be either in favor of PEI or neutral. It concluded that consumers seeing the ELLIS BLACK mark on clothing are likely to believe that the mark is a variation of the PERRY ELLIS mark for goods that are made for African-Americans.

Ellis Burks

This writer finds it difficult to agree with the Board's ruling, perhaps because the ELLIS BLACK mark brings to mind a certain major league baseball player who has twice donned the regalia of the Boston Red Sox (as well as that of the White Sox, Rockies, Indians, and Giants). Maybe it's just the time of year -- in my mind I hear the crack of the bat echoing across the Florida swamps -- but I can't imagine people not perceiving ELLIS BLACK as a person's name, one quite different from PERRY ELLIS.

Text ©John L. Welch 2005. All Rights Reserved.


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