Tuesday, September 09, 2008

TTAB Finds "BOYD'S" and "BOYDS" Confusingly Similar for Clothing, Despite Applicant's Attempt to Limit Its Trade Channels

Continuing our WYHA? (Would you have appealed?) series of decisions, here's another one to consider for inclusion. The Board affirmed a Section 2(d) refusal to register the mark BOYD'S for various items of wearing apparel "offered and sold through authorized dealers," finding the mark likely to cause confusion with the registered mark BOYDS for men's and women's clothing and for related retail services. In re Boyd Coddington’s Hot Rods & Collectibles, Inc., Serial No. 78913114 (August 28, 2008) [not precedential].

There wasn't much room for disagreement about the similarity of the marks; that factor weighed "heavily" in favor of a likelihood of confusion finding. Likewise, the "similarity and nature of the goods and services" favored such a finding. So what was left to argue about? Not much.

Applicant Boyd Coddington's pointed to the restriction on its channels of trade in the identification of goods: clothing "offered and sold through authorized dealers." It argued that this restriction eliminates any likelihood of confusion:

"[Applicant] may control which dealers are classified as authorized dealers. The authorized dealers diminish confusion by clarifying and illustrating the differences between the goods sold in connection with the Proposed Mark and the goods sold in connection with the Cited Mark. In particular, the authorized dealers explain that the good originate from different sources. Consequently, any likelihood of confusion is significantly diminished, if not completely eliminated." [TTABlog comment: was there any chance that the Board would buy this bloviation?]

The Board had two major problems with Applicant's restriction argument: first, the restriction "does not specify a distinct channel of trade" (e.g., hot rod dealers), and so the authorized dealers may be clothing retailers who compete with the registrant. Second, as the Board observed in a footnote, even if there such a narrower restriction had been included, there is still no restriction on registrant's channels of trade, which could include, for example, hot rod dealers.

The Board therefore concluded that the channels of trade must be considered similar, and in light of the "essentially identical" marks and the similar goods and services, it affirmed the 2(d) refusal.

TTABlog note: The late Boyd Coddington, I have learned, was a famous hot rod designer and the star of the television show American Hot Rod.

Text Copyright John L. Welch 2008.


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