Wednesday, August 17, 2011

WYHA? TTAB Affirms 2(d) Refusal of "df & Design" Over "DF," Both for Clothing

The Board didn't flinch in affirming a Section 2(d) refusal of the mark DF & Design (shown below), for various clothing items, finding it likely to cause confusion with the registered mark DF for overlapping clothing items. Would You Have Appealed? In re de Ferran Motor Sports Holdings, LLC, Serial No. 77702401 (July 27, 2011) [not precedential].

Both the application and the cited registration included "shorts," and the "tops" in the registration encompass the "shirts" and "sweaters" in the application; so the Board found the goods to be identical-in-part. The Board therefore presumed, in the absence of any express limitations, that the goods travel in the same channels of trade to the same classes of consumers. These factors weighed "heavily" in favor of a finding of likely confusion.

Of course, the more similar the goods, the lesser the degree of similarity between the marks needed to support a finding of likely confusion.

The literal portion of Applicant's mark, the letter combination "df," is identical in sight and sound to the registered mark. Although Registrant actually uses its mark in a "bright red color," with "wings" and "horns," that is all irrelevant, since the registered mark is in standard character format.

See Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) ("If the registrant . . . obtains a standard character mark without claim to ‘any particular font style, size or color,’ the registrant is entitled to depictions of the standard character mark regardless of font, style, size, or color, not merely ‘reasonable manners’ of depicting its standard character mark.").

Registrant's specimen of use

The Board found nothing in the record to indicate that the "DF" in the cited registration would make a different commercial impression than the "df" in the applied-for mark.

Applicant de Ferran Motor Sports argued that the registered mark is weak, pointing to eight third-party registrations for marks that include "DF" for similar goods. However, Examining Attorney Renee Servance properly objected to these registrations as untimely evidence, since they were first submitted with Applicant's appeal brief. In any case, the Board noted, even weak marks are entitled to protection against registration of confusingly similar marks for overlapping goods.

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

TTABlog comment: Suppose there were eight third-party registration for the letters DF in various design forms, all for clothing. Surely then Applicant would have succeeded in its appeal, right? My search of the PTO database uncovered only two other supposed "DF" design marks in class 25, but the letters "DF" were very difficult to discern in either logo.

Text Copyright John L. Welch 2011.


At 9:01 AM, Anonymous Joe Dreitler said...

It's one of those situations where under much Board precedent, the result is going to be a refusal. Now, if someone goes through a complete examination of all DuPont factors do you get the same result? If you were the owner of the registration, given the differences in the appearance of both marks, would you recommend filingn a lawsuit for trademark infringement? And would you win?

At 12:33 PM, Anonymous Orrin A. Falby said...

The only way I would have appealed this is if the Applicant could present evidence in the form of promotional materials to establish that the commercial impression created by the applied-for mark is not DF. The record seems to lack such evidence. Without it, like Joe said, there is too much caselaw that supports the standard character mark argument.

@Joe - I would not recommend filing a lawsuit. Would you recommend filing a civil suit for review?


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