Thursday, May 21, 2009

Precedential No. 21: TTAB Sustains “PALOMA” 2(d) Opposition to “PALOMITA” for Clothing, But Dismisses Claim for Fraudulent Misuse of ® Symbol

Faced with two Spanish-word marks, the Board declined to apply the doctrine of foreign equivalents, instead concluding that “where both marks are Spanish words we must consider the connotation of the marks to both non-Spanish-speaking consumers and to Spanish-speaking consumers.” It proceeded to sustain Brown Shoe’s Section 2(d) opposition to registration of the mark PALOMITA for “shirts, pants, shoes, and hats,” finding it likely to cause confusion with the mark PALOMA, registered in standard characters and in the design form shown here, for various clothing and footwear items. However, the Board dismissed Opposer’s claim that Applicant Robbins had fraudulently misused the ® registration symbol. Brown Shoe Company, Inc. v. Molly D. Robbins, 90 USPQ2d 1752 (TTAB 2009) [precedential].

Buster Brown

Likelihood of Confusion: The key issue under Section 2(d) was, of course, the similarity of the marks. The Board noted once again that when the involved goods are identical, a lesser degree of similarity is necessary between the marks to support a finding of likely confusion. It concluded that “the points of similarity outweigh the differences.”

Brown Shoe asserted that under the doctrine of foreign equivalents the marks words have similar meanings,: “dove” for PALOMA and “little dove” for PALOMITA. Robbins argued that the doctrine should not be applied, but if it is, then the words have different meanings: PALOMITA also means “checkmark” or “popcorn.”

The Board, however, decided that the circumstances do not warrant application of the doctrine. In English, the words have no meaning, but in light of the similarity in appearance and pronunciation they would likely be perceived as having similar meanings. To Spanish-speaking consumers, one meaning of PALOMITA is “little dove,” and these is nothing inherent in the goods to suggest that a consumer would choose “popcorn” or “checkmark” over that meaning. [Robbins asserted that in use, the “I” in PALOMITA is a checkmark, but the Board pointed out that this is irrelevant, since the applied-for mark is in standard character form.]

And so the Board concluded that the marks are confusingly similar, and it sustained Opposer’s 2(d) claim.

Fraudulent Misuse of the R: The Board began by observing that, with regard to improper use of the registration symbol, it is Office practice “to accept explanations that demonstrate that such use was inadvertent or without any intent to deceive or mislead and that there has been an effort to discontinue the offending use.”

Brown Shoe, however, asserted that Robbins’ admissions that she knew the mark was not registered in the U.S. are sufficient to support the fraudulent misuse claim. Because Robbins did not make any evidence of record, Opposer urged, there is nothing of record to prove the existence of a Mexican registration [which Robbins claimed in her unsworn discovery responses] nor to establish that Mexican law permits the use of the ® symbol.

The Board, however, allowed Robbins to rely on her interrogatory responses indicating that she believed use of the symbol to be proper because she had registered the mark in Mexico. The Board distinguished the legal precedent cited by Brown Shoe and pointed out that Robbins ceased use of the symbol when she learned of the possible misuse as a result of Opposer’s fraud claim.

TTABlog comment: Once again we see how hard it is to make any hay out of someone’s improper use of the ® symbol. Here’s a practical question: since one may freely use TM or SM adjacent any supposed mark, and since the vast majority of consumers (I suspect) don't know the difference between TM, SM, and ® anyway, why make a federal case out of it unless you can really, really prove a bad intent?

Text Copyright John L. Welch 2009.


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