Friday, April 15, 2011

Test Your TTAB Judge-Ability: Is "RALPH LAUREN STIRRUP COLLECTION" for Watches Confusingly Similar to "STIRRUP" for Jewelry?

The PTO refused registration of the mark RALPH LAUREN STIRRUP COLLECTION for "horological and chronometric instruments and parts thereof," finding it likely to cause confusion with the registered mark STIRRUP for jewelry. Applicant asserted that "stirrup" is highly suggestive for "equestrian styled" jewelry, that the Examining Attorney improperly dissected Applicant's mark, and that the addition of the famous RALPH LAUREN mark eliminates any likelihood of confusion. How would you rule? In re PRL USA Holdings, Inc., Serial No. 77634450 (March 21, 2011) [not precedential].

The Examining Attorney contended that the goods "have similar uses" and are marketed in the same trade channels. The addition of RALPH LAUREN to the registered marks "adds to the likelihood of confusion with registrant’s mark, rather than acting to distinguish the marks." [How so? - ed.] And even if the record shows that the registered mark is weak, even weak marks are entitled to protection against registration by a subsequent user of a similar mark for related goods.

The Board agreed with the PTO that watches and jewelry may emanate from the same source. It presumed that the goods are sold in the same trade channels to the same classes of consumers, including ordinary consumers. [Applicant's argument regarding the expensive nature of its goods was ignored, since there is no such limitation in its identification of goods.]

As to the marks, the Board noted that, in general, adding a house mark to another's registered mark does not avoid likely confusion. However, there are exceptions to that general rule: 1) if the marks in their entireties convey significantly different commercial impressions; or 2) if the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted.

The Board concluded that this case falls within the second exception, because of the "rampant use of the term 'stirrup' in connection with a certain type of jewelry. Applicant submitted numerous third-party website pages listings a "wide variety of jewelry items consistently described as 'Stirrup Jewelry'; in each case, the item is in the shape of an equestrian stirrup."

Based on the record, we find that the term common to the marks, “STIRRUP,” is less likely to be perceived by purchasers as a distinctive term serving to distinguish source because it is diluted in the jewelry field. Thus, the addition of applicant’s house mark, RALPH LAUREN, in applicant’s mark is sufficient to distinguish its mark from the cited mark.

Furthermore, the Board pointed to the assertion that Applicant's watches are "equestrian inspired" [Where is that in the identification of goods? -ed.], and that one of Registrant's rings sold under its mark has a stirrup shape.

Noting that the it is not concerned with a "speculative, theoretical possibility" of the likelihood of confusion, the Board reversed the refusal.

TTABlog comment: Well, how did you do? Do you agree with the decision? If stirrup is so weak or descriptive, why didn't Applicant have to disclaim it?

Text Copyright John L. Welch 2011.


At 8:46 AM, Blogger Frank said...

This case illustrates the principle that the party with the well-known mark always wins, even if the law is not on their side.

At 10:03 AM, Anonymous Anonymous said...

I continue to be amazed at how far the bureaucrats will go to find a way to say 'no.' But, as a lawyer practicing before them, it gives me a reason to demand my exhorbitant fees from applicant/clients, so who am I to complain?

At 5:13 PM, Anonymous Anonymous said...

Literal matter can be diluted, without being pure D descriptive.

At 4:35 PM, Anonymous Engineer said...

I too am amazed, and dismayed, at how far the Board will now stretch to find descriptiveness. If a chicken flys over it, the Board will call a pond chicken soup.


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