Monday, March 05, 2007

Precedential No. 16: "BHD & Design" for Clothing Confusingly Similar to Famous "BVD" Mark, Says TTAB.

When a pro se Applicant is pitted against a famous mark, there is only one likely outcome: No way, pro se! That's how it turned out for Applicant Florencio Rodriquez in his attempt to register the mark BHD & Design (shown below) for clothing, including underwear. The Board found his mark likely to cause confusion with the famous mark BVD, used for more than 100 years and registered in various forms for underwear. B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500 (TTAB 2007) [precedential].

Opposer BVD proved use of its mark for underwear since 1876, sales in the billions and advertising expenditures in the millions, a listing as a "top ten brand," and consumer awareness of 90%. Moreover, BVD is denoted in numerous dictionaries as a trademark. Although BVD did not break down its sales and advertising figures by years, its "non-specific" testimony, joined with its long use and the recognition of the mark in dictionaries, led the Board to find that BVD is a famous mark. "In short [or in brief, for those who do not wear boxers - ed.], the fame factor weighs heavily in Opposer's favor."

As to the products, because some of Applicant's goods are identical to those of BVD, "the similarity of the goods is a factor that favors opposer." Moreover, the Board must assume that those common goods are marketed to overlapping classes of consumers; in any case, both parties target men as a primary class of customer. And because neither the opposed application nor the asserted registrations contain any restriction on channels of trade, the Board must presume that both parties sell their goods through the normal underwear channels. The relatively low cost of the goods means that purchasers are held to a lesser degree of care, another factor in BVD's favor.

Finally, as to the marks, the Board not surprisingly found that BHD is the dominant portion of Applicant's mark. It concluded that the letters in both marks would be thought of as arbitrary combinations with particular connotations. "In sum, while the marks have some differences, the overall commercial impressions are very similar."

"The slight difference in letter combination may not even be noticeable when, as here, the goods are the subject of impulse purchasing and, because of the fame of the BVD mark for underwear, the expectation of the consumer in seeing a three-letter mark with the initial letter B and the final letter D used on such goods is that the mark will be BVD."

The fact that Applicant sometimes utilizes the phrase BAD HOMBRE DESIGNS with the mark was of no help, for obvious reasons: that phrase is not part of the mark at issue. And "any contribution of the design to the connotation and overall commercial impression of applicant's mark would be outweighed by the dominant letters.

With all of those du Pont factors pointing in BVD's favor, the Board sustained the opposition on Section 2(d) grounds (and it declined to reach BVD's dilution claim).

Text Copyright John L. Welch 2007.


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