Thursday, September 08, 2011

BEND SPORT COUTURE Confusingly Similar to BENDY and BENDYGIRL for Clothing, Says TTAB, Contingently

The Board sustained this Section 2(d) opposition, contingent upon Opposer's receiving a registration for either of its marks BENDY or BENDYGIRL for women's clothing. The Board found Applicant's mark BEND SPORT COUTURE in the stylized form below, for various clothing items [SPORT COUTURE disclaimed], likely to cause confusion with Opposer's marks. Mansell Construction Ltd. v. Susan Lu, Opposition No. 91184771 (August 24, 2011) [not precedential].

Priority: The Board spent more than half of this 32-page decision considering the issue of priority. Applicant Lu was entitled to rely on her application filing date of January 29, 2007. Her attempt to prove use analogous to trademark use prior to that date was unsuccessful because her documentation regarding pre-sales activity failed to show that "the public would become aware of applicant's mark in any meaningful way."

Opposer Mansell enjoyed a priority filing date of December 16, 2003 for two of its pending applications, for the marks BENDY and BENDYGIRL, and a date of December 8, 2004 for a third application for BENDY. It was unable to prove any technical trademark use prior to Applicant's filing date, and it was likewise unable to establish earlier use analogous to trademark use. Opposer Mansell's oral testimony and its evidence regarding use was indefinite and ambiguous. In particular, Opposer did not show that its domain names were used as trademarks rather than merely as Internet addresses.

The Board therefore ruled that if either of the first two of Opposer's pleaded applications issue to registration, Mansell will be entitled to a constructive first use date of December 16, 2003, and a registration on the third application would provide a constructive use date of December 8, 2004. On the other hand, if none of the registrations issue, Applicant Lu will have priority, again contingent upon her obtaining a registration.

Likelihood of Confusion: Opposer's marks BENDY and BENDYGIRL did not have market or commercial strength, in light of miniscule sales figures. The marks are not merely descriptive, however, and are "at least suggestive, if not arbitrary, in connection with clothing."

The goods are in-part identical. The opposed application is unlimited as to channels of trade, and the Board must therefore assume that the goods will travel in all normal channels. Opposer's channels of trade and classes of consumers overlap. [Query: if Opposer is relying on its applications for priority, should the Board assume that Opposer's identified goods travel in all normal channels as well?]

As to the marks, since the goods are in-part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board found, not surprisingly, that BEND is the dominant portion of Applicant's mark and is similar in appearance and sound, and essentially identical in meaning, to BENDY. As to BENDYGIRL, the Board found the marks to be similar in appearance, sound, meaning and commercial impression.

Balancing the relevant duPont factors, the Board ruled that confusion is likely, and it sustained the opposition, contingent upon registration of one or more of Opposer's applied-for marks.

Text Copyright John L. Welch 2011.


At 9:43 AM, Anonymous Mark Donahey said...

Though I agree that confusion may be likely between BEND and BENDY, I think BEND and BENDYGIRL deserved a different result. The latter case is a dead ringer for In re Hearst Corp., 982 F.2d 493 (Fed. Cir. 1992)(reversing Board's refusal to register VARGA GIRL in light of cited VARGAS registration for identical goods). The decision is a good and short read.

At 10:47 AM, Blogger John L. Welch said...

I think the BENDYGIRL issue would have come out differently had that been the sole mark that Opposer cited. But once BENDY was found to be confusingly similar, I think the momentum of that finding led to finding BENDYGIRL confusingly similar.

At 12:49 PM, Anonymous Anonymous said...

Is this "contingent" decision a first?

Never ran across that before.

At 12:50 PM, Anonymous Anonymous said...

Could the Board have just suspended the Opposition until Opposer had a registration?


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