Precedential No. 18: Invoking 13th duPont Factor, TTAB Reverses 2(d) Refusal of ANYWEAR for Footwear

Although the applied for mark ANYWEAR (Stylized) [below left] for footwear would usually be considered confusingly similar to the cited mark ANYWEAR BY JOSIE NATORI & Design [below right] for "jackets, shirts, pants, stretch t-tops, and stoles," this was not the usual case. Applicant already owned a registration for the plural ANYWEARS in standard character form, for footwear, which registration had coexisted with the cited registration for more than five years. In this "unique situation," the Board found confusion unlikely. In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) [precedential].


There was no question that the two marks at issue are similar, since each is dominated by the word ANYWEAR. Third-party registrations and Internet evidence showed that the goods are related. The Board "would conclude, under usual circumstances, that confusion is likely to occur among consumers in the marketplace." But this is an "unusual situation."

We must balance the similarities between the marks and goods against the facts that applicant already owns a registration for a substantially similar mark for the identical goods, and that applicant’s registration and the cited registration have coexisted for over five years.

Under the thirteenth duPont factor, the Board may consider "any other established fact probative of the effect of use." This factor "accommodates the need for flexibility in assessing each unique set of facts."

Because Applicant registered its mark ANYWEARS in standard character form, the registration covers the mark regardless of font size, style or color, including the identical style depicted in its applied-for mark (above). Consequently "there is no meaningful difference between the standard character and stylized versions of applicant's marks." Moreover, the difference between the singular and the plural forms of ANYWEAR is not meaningful, since consumers are not likely to perceive the slight difference between them.

Applicant's registered mark, covering footwear, has co-existed with the cited mark for more than five years and is no longer vulnerable to attack via a claim of priority and likelihood of confusion.

The Board found that these facts tip the balance in favor of Applicant.

The Board noted that it was not applying the (seldom helpful) Morehouse defense, an equitable affirmative defense that may be asserted in an inter partes proceeding. [Under Morehouse, a defendant may claim that, because of its ownership of a registration for the same or substantially identical mark for the same or substantially identical goods/services, plaintiff cannot be damaged by registration of the challenged mark].

And so the Board reversed the refusal to register.

TTABlog comment: Can you think of a situation where the addition of an "S" to a mark does make a material difference? How about adding an "S" to the mark DUMBAS?

Text Copyright John L. Welch 2012.