Wednesday, March 13, 2013

Test Your TTAB Judge-Ability: Is DIRK for Sunglasses Confusable With DIRK BIKKEMSBERG for Spectacles?

Orange 21 applied to register the mark DIRK for sunglasses, but the PTO refused registration under Section 2(d) in view of the registered mark DIRK BIKKEMSBERG for spectacles. Orange 21 appealed. Did its appeal bear fruit? What do you think? In re Orange 21 North America Inc., Serial No. 85281102 (February 14, 2013) [not precedential].

Examining Attorney Jennifer D. Richardson submitted a dictionary definition of "spectacles," copies of third-party registrations that included both "sunglasses" and "spectacles," and copies of Internet pages displaying sunglasses and eyeglasses under the same mark.

Dictionary evidence showed that the terms "spectacles" and "eyeglasses" are synonymous, and that the term "sunglasses" refers to both spectacles and eyeglasses that have been tinted. It was clear that "sunglasses are related to, and indeed, to some extent overlap with, spectacles in that both may be offered as prescription eyewear." The channels of trade overlap, and both sunglasses and spectacles are sold to the general public.Therefore this du Pont factor supported the refusal.

Of course, when marks appear on virtually identical goods, a lesser degree of similarity between the marks is necessary to support of finding a likelihood of confusion.

In the case at hand, both marks share the term DIRK, making them similar in appearance and pronunciation. Consumers will be inclined to focus on the term DIRK in both marks, as it is the first term in the cited mark and the only term in applicant’s mark. The general commercial impression of both marks, DIRK and DIRK BIKKEMBERGS, is that of a person’s name. It is highly likely that consumers will believe that both marks identify the same source and that the cited mark is merely the complete, full name of an individual whose first name is Dirk. The addition of the term BIKKEMBERGS in the cited mark may add to the likelihood of confusion, inasmuch as it would be perceived as a surname.

Applicant asserted that consumers are just as likely to think of "dirk" as having another meaning: "a dagger, especially of the Scottish Highlands." However, there was no evidence to support that contention, and nothing in the nature of the goods would suggest the meaning that applicant proposed.

The dictionary definition of “dirk” as a dagger carries no greater weight than that of the dictionary definition of “Dirk” as a boy’s first name. Accordingly, we find that purchasers are just as likely to perceive either, or both, meanings of the term when encountering applicant’s mark. Since one of the dictionary meanings is similar to the meaning of the name DIRK in the prior registration, the connotations of both marks are similar.

Applicant pointed to several third-party registrations in an attempt to show that the cited mark is weak. As to three of them (DIRK DAGGER, DIRK ZELLER, and DIRK PITT), applicant failed to provide any information regarding the goods or services. As to a fourth, DIRK DEJOINE for clothing, the Board found it readily distinguishable from the cited mark. "That this mark and the cited mark co-exist tells us nothing about whether applicant’s mark, which does not include a unique second element such as DEJOINE, is similar to the cited mark."

And so the Board affirmed the refusal.

Read comments and post your comment here.

Test Copyright John L. Welch 2013.


At 11:40 AM, Blogger Annette Heller said...

Single word marks are bad for the register. Others who may want to use the single word with other terms will have to fight a rejection based the single term registration. This is true even if there are others using the single term with other terms. In my opinion, single term marks should not be allowed when there are other registrations incorporating that term.

At 1:19 PM, Anonymous Orrin A. Falby said...

@Annette -- It all comes down to whether the marks create a similar commercial impression. I can think of many identical marks used on similar goods that are distinguishable due the context in which the marks are used in marketing materials. What if I wanted to register the term AND. Should I be precluded from doing so simply because there are registrations that contain the term AND?

At 12:16 PM, Blogger Joseph Piper said...

I originally thought that the application may have been filed pro se, but the application was filed by an attorney. Did the filing attorney think the mark would sneak past the Examiner? Sunglasses and spectacles seem highly related IMO, and the cited marks dominant element is DIRK. I would be hard pressed to advise a client to file this mark after just a quick search at the USPTO database should have revealed the cited mark (Dirk[BI] and 009[IC]).

Is it just me, or did these seem like a hopeful filing at best, and an even more hopeful appeal?

At 4:03 PM, Blogger John L. Welch said...

Maybe the applicant was looking at this through rose-colored spectacles.


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