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 In re Park Lane Shoes Limited, Serial No. 79073835 (September 6, 2011) [not precedential].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.