Thursday, September 11, 2008

Precedential No. 40: "SAM EDELMAN" Confusingly Similar to "EDELMAN" for Handbags, Says TTAB

In its first precedential decision in more than a month, the Board affirmed a Section 2(d) refusal to register the mark SAM EDELMAN for luggage, handbags, and other Class 18 goods, finding it likely to cause confusion with the registered mark EDELMAN for handbags, luggage trunks, and other Class 18 goods. Applicant's ownership of a registration for the SAM EDELMAN mark for footwear was of no help, and its arguments regarding sophistication of purchasers and the right of an individual to use his own name fell on deaf ears. In re SL&E Training Stable, Inc., 88 USPQ2d 1216 (TTAB 2008) [precedential].

Because the goods of the parties are in part identical, the Board presumed that they travel in the same trade channels to the same classes of customers. As to the marks, the Board found that "[b]ecause the marks share the surname 'Edelman,' which is the only element in the registered mark and is a clearly recognizable and prominent element in applicant’s mark, ... there are strong similarities between the marks in terms of appearance, sound, meaning and commercial impression." Moreover, consumers may see the EDELMAN mark as an abbreviated form of SAM EDELMAN.

Applicant contended (without evidence) that consumers of handbags are sophisticated, but the Board noted that he goods in the application and registration are not restricted in any way, and could be sold in discount stores to the unsophisticated consumer.

Applicant also argued that there is no likelihood of confusion because of "a strong public policy to allow individuals to use their names," especially where applicant has "built a reputation in the relevant industry." The Board found no such public policy in CAFC, TTAB, or CCPA precedent, but rather a more compelling policy of avoiding a likelihood of confusion. "Thus, the fact that SAM EDELMAN is an individual’s name does not give applicant an unfettered right to use that name if it conflicts with a previously registered mark." [TTABlog aside: we're talking about registration here, not use, so what's the relevance of this argument anyway?]

As to the supposed renown of Sam Edelman, Applicant submitted seven article referring to him. The Board was not impressed: "These articles are evidence that Sam Edelman was referenced in seven articles. However, they do not prove that Sam Edelman is well-known in the fashion industry." Even if he were, the Board noted, it is not clear how that would decrease the likelihood of confusion.

Finally, Applicant pointed to its registration of SAM EDELMAN for footwear, and contended that the footwear identified in its registration "is related to the products identified in its application, and therefore justifies the registration of the application at issue." In other words, the PTO is somehow estopped from refusing to register the mark for class 18 goods. Not so, said the Board.

"'[t]his Office should not be barred from examining the registrability of a mark when an applicant seeks to register it for additional goods as it does here, even when the additional goods are closely related to those listed in a prior registration.' In re Sunmarks Inc., 32 USPQ2d at 1472. This Board has the authority and duty to decide an appeal from a final refusal to register, and this duty may not be delegated by adopting the conclusion reached by another examining attorney on a different record."

Balancing the relevant du Pont factors, the Board found confusion likely, and so it affirmed the refusal to register.

Text Copyright John L. Welch 2008.


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