Monday, October 24, 2011

TTAB Affirms 2(e)(1) Deceptively Misdescriptive Refusal of BLACK FLEECE for Fleeceless Clothing

The Board affirmed a Section 2(e)(1) refusal of the mark BLACK FLEECE in standard character form, for various clothing items "not made of fleece fabric," finding the mark to be deceptively misdescriptive under Section 2(e)(1) and lacking in acquired distinctiveness under Section 2(f). Three consumer declarations submitted by Applicant (Brooks Brothers) were "hardly overwhelming evidence" of customer perception of the mark, and were "far from conclusive" as to "source-indicating recognition by consumers." In re Retail Brand Alliance, Inc., Serial No. 77049126 (September 15, 2011) [not precedential].

Applicant conceded that the term "'black fleece' is facially misdescriptive of apparel that is not made of black fleece," but it contended that consumers are not likely to believe the misrepresentation. In any case, urged Applicant, the mark has acquired distinctiveness.

Examining Attorney David Taylor argued that the evidence "demonstrates that the description conveyed by the mark is plausible because consumers regularly encounter goods that contain the features or characteristics of the mark, namely, 'black fleece.'" And he maintained that Applicant's 2(f) evidence fell short.

Section 2(e)(1): The Board set out the test for Section 2(e)(1) deceptive misdescriptiveness: First, does the mark misdescribe the goods or service to which it applies? Second, if so, are consumers likely to believe the misdescription.

The first prong of the test was satisfied because BLACK FLEECE describes a type of clothing and, as Applicant conceded, the identified goods are "not of that type." As to the second prong, the Board found "the record supports a finding that consumers may encounter clothing of the type identified in the involved application that are made of black fleece [e.g., coats, jackets, and gloves] , ... customers are likely to believe that BLACK FLEECE misdescribes the identified goods."

Applicant argued that customers for its expensive clothing items are not likely to believe or expect that the goods are made from fleece, but the Board observed that "not all clothing items are purchased with such a degree of care." Moreover, "applicant's goods under the BLACK FLEECE mark are not only available to discerning consumers of Brooks Brothers stores, but to anyone," and the goods are offered online and via catalog.

Catalog and Internet purchasers of applicant’s goods do not enjoy firsthand examination thereof prior to purchase. Furthermore, catalogs and Internet postings do not necessarily describe or depict goods in such detail as to prevent consumers from believing that the goods are made of fleece.

In addition, a consumer hearing a radio advertisement for Applicant's goods "might expect the clothing items to be made of fleece materials."

Applicant pointed to a first set of three declarations submitted on this point, but the Board gave them short shrift because the declarants were clothing or fashion professionals, not consumers of Applicant's goods. It also provided declarations from three consumers, but the Board found them to be "hardly overwhelming evidence of consumer perception."

And so the Board ruled that the mark BLACK FLEECE is deceptively misdescriptive of the goods under Section 2(e)(1).

Acquired distinctiveness: Applicant has used its BLACK FLEECE mark since 2007, a duration insufficient to create a prima facie case of acquired distinctiveness. Applicant pointed to its use of the marks BROOKS BROTHERS, GOLDEN FLEECE, and the "hanging sheep" logo since the mid-1800s as prima facie evidence of acquired distinctiveness under Rule 2.41(b), but the Board pointed out that an applicant may "tack" such earlier marks only if they are the "legal equivalent" of BLACK FLEECE. Here, the marks are obviously not "the same" as BLACK FLEECE. Moreover, there was no evidence that the notoriety of Applicant's other marks has been transferred to the BLACK FLEECE mark.

Applicant's sales and advertising figures under the BLACK FLEECE mark lacked context vis-a-vis others in the same field, and so had little probative value. In any case, the figures were "not overwhelming." Similarly, its data for website hits lacked context. And its evidence of marketing impact failed to establish that consumers recognized BLACK FLEECE as a source indicator.

For instance, applicant points to 2.8 million consumer impressions and 15.5 million viewership impressions of the January 2009 cover of GQ magazine featuring a photograph of the actress Jennifer Aniston naked except for a BLACK FLEECE necktie. However, the record does not reveal whether viewers of the image of an otherwise unclothed Ms. Aniston paid particular attention to her necktie and, if so, whether the BLACK FLEECE mark was visible on it or they recognized it as belonging to the BLACK FLEECE collection.

Finally, although the three declarations from customers provided direct evidence of source-indicating recognition, "the very small number ... renders them far from conclusive."

In sum, Applicant's evidence fell "rather short" of demonstrating acquired distinctiveness.

TTABlog note: The Board, in its final footnote, pointed out that on a different record Applicant might establish acquired distinctiveness. Maybe a survey is in order? A new application, or a civil action for review of this decision under Section 1071(b), would provide the opportunity for submission of additional evidence.

Text Copyright John L. Welch 2011.


At 9:47 AM, Blogger Andy K. said...

I think that the Applicant could have countered the mis-descriptiveness argument by claiming a consumer who mistakenly purchased a clothing item expecting it to be made of fleece because of the trademark was essentially "fleeced of their money". This second construction of the mark arguably gives it an unexpected/incongruous meaning that would put Applicant in the "black"...

At 4:10 PM, Anonymous Anonymous said...

As a Brooks Brothers customer, it wouldn't have even crossed my mind that the Black Fleece mark had any association with actual or synthetic fleece-especially given the longtime use and registration of the companion Golden Fleece mark. I agree perhaps a survey or other evidence would have been helpful.

At 10:55 PM, Blogger Ron Coleman said...

I agree with Anonymous. Dudes: GOLDEN FLEECE! It's pricey stuff but no, it is not made of gold.


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