Precedential No. 33: TTAB Designates Section 2(d) Alligator Decision as Precedential

For some reason, the Board reached back to April 2009 and re-designated its dueling alligator Section 2(d) decision as precedential. It found the design mark shown below left to be likely to cause confusion with the admittedly-famous Lacoste alligator mark shown on the right, both for various, and partly identical, clothing items. Applicant Maxoly, Inc. feebly argued that its mark symbolizes the "Cuban culture" and that its clothing is "directed to the Cuban Community," but the Board found those arguments to be a crock. Lacoste Alligator S.A. v. Maxoly, Inc., 91 USPQ2d 1594 (TTAB 2009) (re-designated as precedential, July 31, 2009). [precedential].



Although Lacoste's evidence of fame was "far from impressive," the Board found its mark to be famous in view of Applicant's admission of fame in its answer to the notice of opposition: "it would be unduly prejudicial to require more evidence from opposer in light of applicant's admission."

Maxoly's assertion regarding its goods being directed to the Cuban Community was, of course, irrelevant, since there was no such restriction in its application.

With the goods identical in part and Lacoste's mark deemed famous, you can guess how the comparison of the marks came out: the Board found that "the similarities of the designs outweigh the differences."

The trademark designs of the parties are readily discernable as alligators or crocodiles. Because of the fame of opposer's alligator designs, the addition of the words "Colba Island" is not sufficient to distinguish applicant’s mark from opposer's marks. With little opportunity for a side-by-side comparison and the fallibility of human recall, consumers encountering applicant's mark may mistakenly believe that applicant's clothing products are a new line for opposer.

Maxoly contended that the crocodile design of its mark mirrors the "reptile shape of Cuba," and so "represents, identifies and symbolizes 'Cuban Heritage' and "Cuban Culture' in clothing." The Board pointed out, however, that Maxoly is seeking a national registration; its identified products are not limited to the Cuban community. "[T]here is nothing to suggest that the vast majority of consumers will recognize applicant's entire mark, including the word[s] COLBA ISLAND, as representing Cuban Heritage."


Finally, the Board pointed out that even if Maxoly's mark represents the national symbol of Cuba, "that status does not make the mark registrable if it is likely to cause confusion with a previously registered mark." To state the obvious:

Section 2(a) of the Trademark Act of 1946, 15 U.S.C. Sec. 1042(a), does not automatically confer registrability on a mark because it comprises a national symbol. Section 2(a simply prohibits the registration of marks that disparage or falsely suggest a connection with national symbols.

And so the Board sustained the opposition.

TTABlog comment: Suppose Maxoly files a new application for this mark, limiting the goods to clothing sold to the Cuban community. Would that eliminate the likelihood of confusion? Does Lacoste not sell its clothing bearing the "ubiquitous French amphibian" to the Cuban community?

Text Copyright John L. Welch 2009.