Monday, May 14, 2012

TTAB Finds Reverse Confusion Between KUTT CALHOUN and Supplementally-Registered CALHOUN for Clothing

Rapper Melvin "Kutt" Calhoun sought to register the mark KUTT CALHOUN for various clothing items, including shirts, but was thwarted by a Supplemental Registration for the mark CALHOUN for "sports shirts." Kutt appealed, claiming that his renown in the field, coupled with the weakness of the cited mark, would make confusion unlikely. That argument failed to "kutt it" with the Board, who proceeded to affirm the Section 2(d) refusal to register. In re Melvin Calhoun, Jr., Serial No. 77946290 (April 27, 2012) [not precedential].

The Board considered the goods to be, in part, identical, since Registrants "sports shirts" are encompassed by Applicant's "shirts." Neither the registration nor the application include any limitations on channels of trade, so these shirts presumably travel in the same normal channels to the usual classes of consumers.

As to the marks, the Board first observed that when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Applicant argued that the dominant portion of his mark is KUTT, since CALHOUN is a well known surname, registered on the Supplemental Register. Applicant claimed that his is very well known, that he spent tens of thousands of dollars on promoting his name, that his debut album reached #60 on the Billboard charts, and thus that relevant consumers recognize that the goods come from him. In short, he urged that his is famous among the relevant consuming public, that the cited mark is weak, and therefore that there cannot be a likelihood of confusion.

The Board pointed out, however, the fame of Applicant would "exacerbate, rather than obviate, the likelihood of confusion" between the marks. Consumers who are familiar with Applicant's mark are "likely to believe, upon seeing the registrant's mark on sport shirts, that the shirts emanate from the same source as KUTT CALHOUN shirts." I.e., reverse confusion.

Although CALHOUN is a surname, which is presumably why it is registered on the Supplemental Register, marks on that Register may be cited as bars under Section 2(d). There is no special rule that applies to surname marks registered on the Supplemental Register. And even weak marks are entitled to protection.

Finally, Applicant argued that its consumers are sophisticated, and therefore will not be confused. The Board took this as an argument about trade channels, not sophistication or purchaser care. However, the trade channels overlap. And furthermore this argument does not address the "reverse confusion" problem.

The Board therefore affirmed the refusal to register.

TTABlog note: Applicant's identification of goods includes "wearable garments." Are there other kinds of garments?
Text Copyright John L. Welch 2012.


At 2:01 PM, Anonymous Anonymous said...


Both the Board and USPTO allow for multiple surname registrations all the time. I see numerous instances where a surname is registered for the surname. Then along comes a new person or persons and registers JIM FORD, SALLY FORD, TOM FORD, etc. in the same class (usually clothing), presumably because it is their full name and does not conflict?

Perhaps it would have made a difference in this case if it was his real name instead of a fictitious name?

At 8:26 PM, Anonymous Rob said...

One of the least convincing opinions I've read in a while. Time to start a WYHFA section (Would You Have Further Appealed?)


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