Friday, January 11, 2008

TTAB Finds "FYBY" for Silkscreening Services Confusingly Similar to "FUBU" Clothing Mark

Another pro se trademark crusader kicked the TTABucket in his lonely quest for the Holy Grail of trademark registration. The Board deep-sixed the application of Guy R. Wilson, Jr., of Hoschton, Georgia, to register the mark shown immediately below, for "silk screen painting on clothing." It found his mark likely to cause confusion with Opposer's mark FUBU, used and registered for various clothing items. GTFM, Inc. v. Wilson, Opposition No. 91170761 (December 27, 2007) [not precedential].

The Board began by finding that Applicant's mark is dominated by the letters FYBY. [Applicant Wilson shot himself in the foot right at the git-go when he conceded same in his answer to the notice of opposition.] The design of Wilson's mark was not sufficient to distinguish it from the mark FUBU.

"[I]t is not unrealistic to assume that consumers may not keep in mind the precise letters of the mark, and thus be able to do differentiate FYBY from FUBU"

In addition, the marks have similar meanings and commercial impressions. Opposer's mark stands for "For Us, By Us." However, Opposer submitted evidence showing that FUBU is also understood as having a "secondary meaning" of "for you, by you." That, the Board noted, is a similar connotation to the phrase "FOR Y'ALL BY Y'ALL" in Wilson's mark.

The Board concluded that the marks are similar in appearance, sound, meaning, and commercial impression.

Turning to the goods and services, the Board observed that there are no limitations on the services in the applied-for application, and that Opposer's goods are broadly identified in its registrations. Therefore the Board presumed that Wilson's silkscreening painting services are available to all potential consumers of clothing, and move [sic] in the same channels of trade and are sold to the same customers.

Moreover, silkscreen painting services are related to Opposer's clothing items because "clothing, particularly t-shirts and sweatshirts, often display designs that are created by the consumer, affixed by silkscreen, and then sold back to the consumer." [TTABlog query: in which case, the consumer would have to be rather doltish to be confused into thinking that FYBY is FUBU.]

Therefore, applying the DaVinci Code -- I mean balancing the du Pont factors -- the Board found confusion likely and affirmed the 2(d) refusal.

TTABlog comment: Applicant Wilson neither submitted evidence nor filed a brief. It's too bad he didn't put up a bigger fight here, because the Board's decision is not all that convincing. He could have been a Dennis the Menace, instead of poor old Mr. Wilson.

Text Copyright John L. Welch 2008.


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