Tuesday, July 05, 2005

Citable TTAB Decision: "NORTON MCNAUGHTON ESSENTIALS" Not Confusingly Similar To "ESSENTIALS" For Women's Clothing

In the fifth citable TTAB decision of 2005, third-party registration evidence played a crucial role in the Board's dismissal of an opposition to registration of the mark NORTON MCNAUGHTON ESSENTIALS for women's clothing. The Board found the mark not likely to cause confusion with Opposer's registered mark ESSENTIALS for essentially the same goods. Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005).

Specimen of Use

Twenty-three registrations in the clothing field (owned by twenty-one different owners) for marks that include the word ESSENTIALS corroborated the dictionary definition of that word, and led the Board to conclude that ESSENTIALS is a "highly suggestive term as applied to clothing," and that purchasers "are able to distinguish among various ESSENTIALS marks by looking to other elements of the marks."

The Board explained that third-party registrations are not evidence (under the Sixth du Pont factor) that the registered marks are actually in use or are known to purchasers. Nevertheless, they "may be given some weight to show the meaning of a mark in the same way that dictionaries are used."

The Board concluded that "applicant's addition of its house mark ... suffices to distinguish the two marks when they are viewed in their entireties," and that the dissimilarity of the marks outweighed the other du Pont factors.

Text Copyright John L. Welch 2005. All Rights Reserved


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