Friday, February 05, 2010

Bummer! TTAB Finds "PEACH CLAIRE" for Lingerie Not Confusingly Similar to "PEACH BUNS" for Clothing

In an unexpectedly dull opinion, disappointingly devoid of illustrations, the Board dismissed an opposition to registration of the mark PEACH CLAIRE for lingerie, finding the mark not likely to cause confusion with the registered mark PEACH BUNS for women's clothing, including swimwear. Opposer's lack of proof regarding the relatedness of the goods, paired with the suggestiveness of the word PEACH for clothing, led to Opposer's downfall. GA Peach Buns, Inc. v. Voucia Corporation, Opposition No. 91174032 (January 21, 2010) [not precedential].

Although the parties' actual channels of trade were somewhat circumscribed, there were no such restrictions in the application or registration, and so the Board presumed that these items of everyday apparel "are sold in the same wholesale market as well as at least in some of the same retail channels, such as department stores, to the same ultimate consumers."

However, the Board noted that there is no per se rule that all clothing items are related, and so Opposer had the burden of proof to show that "consumers will believe that these different types of clothing identified by similar marks come from a single source."

The Board noted that "undergarments and outerwear are specifically different types of clothing, having different purposes," and the record lacked evidence that undergarments are complementary or functionally similar. Opposer submitted a Victoria's Secret catalog offering certain items of swimwear and undergarments under the same marks, but that was not sufficient to persuade the Board that "swimwear typically emanates from companies that produce underwear or that purchasers would naturally expect both products to emanate from the same source."

To top it all off, Opposer's president, stated that "I don't consider swimwear an undergarment" and "I would not wear it as underwear." And so the Board concluded, as the bottom line, that Opposer failed to carry its burden of proof to show the relatedness of the goods.

As to the strength of Opposer's mark, the "evidence as a whole falls far short of indicating strength and recognition of PEACH BUNS in opposer's market." Moreover, the Board found that PEACH BUNS is "by its nature" suggestive (again with help from Ms. Smith's own testimony):

In explaining the selection of opposer's mark, Ms. Smith states that she "had always been remembered amongst associates as the Georgia Peach with the perfect butt." *** In this regard we take judicial notice of the definition of "peach" as "Informal. a person or thing that is especially attractive, liked, or enjoyed"; and the definition of "buns" as "Slang. the buttocks." The mark suggests revealing clothing, or, for example, swimwear to show off an attractive part of the body.

Several third-party registrations for marks containing the word PEACH for clothing [for example, BEHIND EVERY GIRL THERE IS A PEACH] indicate that the word has a suggestive meaning.

Finally, the Board observed that when the goods involved "are not highly related, a greater degree of similarity in the marks is required to support a finding of likelihood of confusion." It noted that PEACH BUNS "is a slang expression suggesting revealing clothing or an attractive body part, while PEACH CLAIRE suggests a particular individual or an individual's name." The Board therefore found that "the differences between the marks as a whole in terms of their meaning and commercial impression are sufficient to outweigh those similarities."

And so the Board dismissed the opposition.

TTABlog comment: Even if Opposer had proven the goods to be related, do you think Applicant still would have won? It seems to me that Opposer would also have to show that its mark is very strong in order to overcome the differences in the marks.

Text Copyright John L. Welch 2010.


At 9:31 AM, Anonymous Anonymous said...

I had a client with GEORGIA PEACH WEAR, a small operation and PEACH BUNS Opposed. He did not have the enthusiasm to go through the Opposition proceeding, so default judgment ensued. I am reassured to see the decision that I think we would have achieved.... several years later.

That banner on Opposer's web site has not changed. The Design is distinctive, but not the text mark...



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