Wednesday, February 10, 2010

Finding Suits, Handbags, and Footwear Related, TTAB Affirms 2(d) Refusal of "VABEENE" Over "VABENE"

The complementary nature of the goods, coupled with third-party registration evidence, led the Board to affirm a Section 2(d) refusal to register the mark VABEENE for "leather and imitations of leather and goods made of these materials, namely handbags and evening bags; trunks and traveling bags, umbrellas, parasols and walking sticks" and for "clothing namely footwear." The Board found Applicant's mark likely to cause confusion with the registered mark VABENE for "suits." In re Müller, Durrer & Müller, Schuhateliers, Serial No. 79028161 (January 22, 2010) [not precedential].

Applicant argued that the additional "E" in the applied-for mark "impacts the way the mark is pronounced." The Board pointed out, however, that because neither mark is a common English word, it must consider all possible pronunciations, including identical pronunciations.

Applicant also contended that the word VABENE translates from the Italian to "good," but the Board found no entry for the word in an Italian/English dictionary, and in any case it observed that this line of argument "ignores those potential purchasers who are not familiar with Italian or the Italian word 'vabene.'"

And so the Board found the marks to be "very similar in appearance and commercial impression."

Turning to the goods, Examining Attorney Aretha Somerville submitted third-party, use-based registrations that include footwear, handbags, and suits. Moreover, the Board found the goods to be complementary. [I know when I wear a suit I always carry a walking stick - ed.] And given the lack of any limitation on channels of trade in the application or cited registration, the Board must presume that the goods travel in all ordinary channels of trade to all classes of customers for the goods.

The Board concluded that confusion is likely and it therefore affirmed the refusal.

TTABlog comment: When I carry my walking stick, I get many compliments:

Text Copyright John L. Welch 2010.


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