Tuesday, April 06, 2010

Finding Clothing and Fountain Pens Related, TTAB Sustains "Le TIGRE" 2(d) Opposition

The near identity of the marks and the strength of Opposer's mark let the Board to sustain a Section 2(d) opposition to registration of the mark LE TIGRE for "writing instruments namely fountain pens, ball point pens, felt and fiber tip pens" and "markers and small leather goods, namely, cases for diaries and daily planners; and brief case type portfolios." The Board found Applicant's mark likely to cause confusion with the registered mark LE TIGRE (Stylized) shown immediately below, for various clothing items. Kenneth Cole Productions (LIC) Inc. v. Andrew Craig, Opposition No. 91161781 (March 23, 2010) [not precedential].

Not surprisingly, the Board found the marks to be visually similar, and identical in meaning and commercial impression. "Because of the near identity of the marks, this du Pont factor weighs heavily in favor of opposer and a finding of likelihood of confusion."

Opposer urged that its mark is famous, but the Board found its proofs to be inadequate. Opposer pointed to the fact that its registration is 28 years old and contended that its mark has received "enormous unsolicited publicity and media attention." But the Board noted the lack of evidence as to Opposer's sales and advertising figures.

Without this type of evidence, it is nearly impossible to gauge the level of success of the mark or the degree of exposure the general public has had to the mark. Further, without these numbers and those of competitors, it is difficult to place any success or relative fame into context.

Nonetheless, Board found that Opposer's mark is "certainly a strong mark for clothing."

Applicant argued that Opposer's mark is weak in view of third-party use of the same or similar marks on similar goods. But the bulk of Applicant's evidence comprised third-party registrations, which are not evidence of actual use. Applicant's Internet evidence showed use of the mark "tiger" rather than LE TIGRE. The Board concluded that this third du Pont factor was neutral.

Finally, turning to the goods, the Board observed once again that the greater the similarity in the marks, the less similarity is required between the goods to support a likelihood of confusion finding.

Based on the record evidence, and particularly the testimony of Opposer's witnesses and third-party registrations, the Board found that "it would not be uncommon for consumers to encounter the same trademark being used as a source identifier for clothing apparel as well as accessory items that would include applicant’s identified goods." For example, the COACH, LUIS VUITTON, KATE SPADE, and EMILIO PUCCI marks are so used. The Board therefore found the involved goods to be related.

The Board noted that the identifications of goods in the involved application and registration do not include any limitation as to channels of trade or classes or purchaser, and the evidence showed that at least "high end" brands of clothing are sold in the same commercial establishments as pens, daily planners, and portfolios.

And so the Board sustained the opposition.

Text Copyright John L. Welch 2010.


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