Test Your TTAB Judge-Ability: Are PARK LANE and PARK AVENUE Confusingly Similar for Footwear?
Put on your black robe and your thinking cap, dear reader, and take a stab at this appeal from a Section 2(d) refusal. Applicant sought to register the mark PARK LANE for various clothing items, including footwear. The PTO refused registration, finding the mark likely to cause confusion with the mark PARK AVENUE, registered in the form shown immediately below, for "women's hosiery and footwear." So the goods overlap. But are the marks too close? How would you rule? In re Park Lane Shoes Limited, Serial No. 79073835 (September 6, 2011) [not precedential].
Applicant (a UK Company) contended that Park Avenue is one of the most famous streets in the world, conjuring up, in the minds of consumers, images of "a fashionable, glamorous and sophisticated lifestyle in New York City," while PARK LANE refers to a well-know street in London, synonymous with wealth and the aristocratic English lifestyle.
The Examining Attorney argued that AVENUE and LANE have similar meanings, and that the marks therefore have similar connotations and overall commercial impressions.
Since the goods overlap, the Board must presume that the parties' respective footwear travel in the same trade channels to the same classes of consumers, including ordinary consumers who would exercise nothing more than ordinary in their purchases. Moreover, a lesser degree of similarity is needed to support a likelihood of confusion finding when the goods are identical.
Here, according to the Board, the marks are "somewhat similar in sound and appearance," but they have different meanings and commercial impressions when considered in their entireties.
Citing other cases in which similar marks used for the "same" goods were nonetheless found to be not confusingly similar [CROSSOVER, PLAYERS, BOTTOMS UP, CRISTAL, VARGAS GIRL], the Board found that PARK LANE and PARK AVENUE “are different in meaning and engender different commercial impressions."
PARK AVENUE suggests a lifestyle for an address in New York City. *** PARK LANE suggests sophistication associated with a fashionable address in London. Accordingly, we find that the marks PARK AVENUE and PARK LANE are different in meaning, and engender different overall commercial impressions.
The Board ruled that "[t]hese differences outweigh any similarities in sound and appearance.”
In finding that the marks have different meanings and overall commercial impressions, we realize that consumers in this country may be more familiar with Park Avenue than they are with Park Lane. But, their familiarity with Park Avenue, in itself, is likely to sufficiently distinguish the marks in terms of meaning and commercial impression.
And so the Board reversed the refusal.
TTABlog comment: Well how did you do? Did this one catch you by surprise? In the TOTAL case, blogged yesterday, the Board observed that the Board "must base [its] decision on the least sophisticated potential purchasers." Do you think the least sophisticated purchaser of footwear would know where Park Lane is? Or Park Avenue for that matter? Or recognize the difference?
In that last quoted paragraph, is the Board misapplying the fame of the PARK AVENUE mark? In other words, it says that because PARK AVENUE is famous, there is less likelihood that it will be confused with other similar marks.
Text Copyright John L. Welch 2011.
posted by John L. Welch @ 9/23/2011
7 comments
7 Comments:
In my view the Board did not misuse “fame.” I think it was just saying that Park Avenue is well known, so those familiar with it would easily recognize that Park Lane is something different entirely. See, e.g., Laboratoires du Dr. N.G. Payot Etablissement v. Southwestern Classics Collection Ltd., 3 U.S.P.Q.2d 1600, 1606 (T.T.A.B. 1987) (“We remain convinced that the familiar is readily distinguishable from the unfamiliar and we note a line of decisions recognizing the distinction between common and uncommon terms used as trademarks.”).
I'll bet the Examiner was surprised by this one. It's a shame it's not precedential.
I am with Freiburger on this one. See also In re General Electric Co., 134 U.S.P.Q. 190 (C.C.P.A. 1962)("We consider this to be a point of great significance . . . We entirely agree . . . that 'the human mind has little difficulty differentiating between the familiar and the unfamiliar'");and National Distillers Corp. v. William Grant & Sons, Inc., 184 U.S.P.Q. 34, 35 (C.C.P.A. 1974) (holding that DUET is a very common word in the English language and would be distinguished from the word DUVET); Faberge, Inc. v. Dr. Babor GmbH & Co., 219 U.S.P.Q. 848 (T.T.A.B. 1983) ("purchaser of cosmetic products would have no difficulty in distinguishing between the well-known easily recognized word BABE and applicant's unfamiliar BABOR"); Jacobs v. International Multifoods Corp., 212 U.S.P.Q. 641 (C.C.P.A. 1982) (Commonly known term, BOSTON TEA PARTY and uncommon term, BOSTON SEA PARTY would not be confused despite apparent similarities.)
11 years of co-existence with no actual confusion yesterday and now today "lane" and "avenue" conjure up different commercial impressions. I'm not into fashion but have spent time in London and did not know of Park Lane. As a purchasing consumer of clothing, I would think Park Lane is a cheaper/less sophisticated version of Park Avenue.
Finally they get it! Logically, the more famous a mark, the LESS likely it is to be confused with a similar but different mark. It's that fame that insures people will notice smaller differences and realize the mark they see is NOT the famous mark. The illogic of the courts' opposite approach has always driven me nuts. While I'm not a fan of the dilution theory, which turns a mark per se into personal property, if one wants to give famous marks greater protection, dilution is the only logical way to do it. Broadening the scope of protection under traditional infringement doctrine, contrary to the realities of the marketplace, is nonsensical at best if not intellectually dishonest.
The Board didn't say the mark is famous. It said the place is famous.
So DENT ZONE is confusingly similar to AUTO ZONE (despite no actual confusion for ten years), but PARK LANE is not confusingly similar to PARK AVENUE. Famous trademarks rule, evidence be damned.
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