Thursday, January 10, 2008

"LEGSTICK" Confusingly Similar to Famous "L'EGGS" Mark for Hosiery, Says TTAB

Essentially ruling that Applicant Amine Mahmoud had no leg to stand on, the Board sustained a Section 2(d) opposition to registration of the mark LEGSTICK for various clothing items, including hosiery and panty hose. It found the mark likely to cause confusion with the famous mark L'EGGS, registered and previously used for hosiery and panty hose. Sara Lee Corp. v. Mahmoud, Opposition No. 91162134 (December 27, 2007) [not precedential].

The Board began its du Pont analysis by finding that the goods overlap, and therefore that the channels of trade and the classes of purchasers are presumably the same. Moreover, hosiery and panty hose are ordinary consumer items that are purchased without much deliberation. That took care of factors 2, 3, and 4.

As to the fifth factor, the Board found the mark L'EGGS to be famous for Section 2(d) purposes. Opposer has used the mark for more than thirty-five years, its products are sold at more than 40,000 retailers, sales over the years have totaled more than $12 billion, marketing expenditures exceeded $2 billion, Opposer claims a 57% share of the sheer hosiery market, its products have been the subject of numerous media stories, and the mark enjoys very high brand awareness. As a famous mark, L'EGGS is entitled to "a very broad scope of protection." Indeed, fame is a "dominant factor" in the du Pont analysis.

For the last leg of its journey to judgment, the Board considered the similarity or dissimilarity of the marks. The Board noted that when identical goods are involved, a lesser degree of similarity in the marks is necessary to support a likelihood of confusion claim. Moreover, when the opposer's mark is famous, the degree of similarity necessary is also diminished. [TTABlog query: how low can it go?].

The Board noted that "legs" and "leg" are fairly suggestive for the goods, "but any such inherent suggestiveness of opposer's mark is mitigated by and must be considered in conjunction with the exceedingly high degree of fame the mark has achieved." Although finding it a "close question." the Board ruled that the first du Pont factor weighs in Opposer's favor.

The Board's finding as to similarity was corroborated by the results of Opposer's survey: 17.7% of the survey respondents believed that LEGSTICK hosiery is "put out by L'eggs," and that result constituted "probative evidence which supports a likelihood of confusion." Twenty-eight of the thirty-nine respondents who believed "L'eggs" to be the source of LEGSTICK hosiery identified the presence of "legs" or "leg" as the reason for their belief.

The Board concluded that factors two through five so heavily favored Opposer that "the only way we could ultimately conclude that there is no likelihood of confusion would be if we were to find, in applicant's favor, that applicant's mark is so utterly dissimilar to opposer's mark that the first du Pont factor outweighs all of the other factors in the likelihood of confusion analysis." That the Board could not do.

And so it sustained the opposition.

Text Copyright John L. Welch 2008.


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