Wednesday, June 26, 2013

Test Your TTAB Judge-Ability: Are Pet Apparel and Human Clothing Related?

This applicant sought to register the mark PAWS4PEACE in the design form shown below left, for "pet clothing, pet collars, pet leashes, overnight bags/tote bags for pets, [and] pet carriers." The PTO refused registration under Section 2(d) in view of the two registered marks: PAWS FOR PEACE in standard character form and the design mark shown below right, both for "human apparel, namely, shirts, sweat shirts, socks, pajamas, hats; footwear, namely, sneakers and shoes." Was Examining Attorney Zhaleh Delaney barking up the wrong tree? How do you think this came out? In re Paws4Peace, LLC Serial No. 85215720 (May 29, 2013) [not precedential].

The marks:  The Board noted that both designs comprise fanciful paw prints with the metacarpal pad replaced by a peace symbol. Both marks "conjure up a sentiment of integration involving animals and peace." The wording in Applicant's mark, PAWS4PEACE, articulates "the same or a very similar expression created by the registered design mark." Therefore the wording does not outweigh the similarities between the design portion of these two marks.

The record evidence did not show that "paw and peace symbol" designs are commonplace. Applicant pointed to one third-party registration for a similar design for clothing, but that dog wouldn't hunt: there was no evidence as to whether that mark is in use, or whether the consuming public has any familiarity with it.

As to the registered word mark, the wording in the applied-for mark is essentially equivalent. The inclusion of the design in Applicant's mark has lessened significance since it reinforces the commercial impression of the literal portion.

In sum, the Board found applicant's mark to be "very similar" to the two cited marks.

The goods:  Internet evidence showed that pet clothing and human clothing may emanate from a common source, and further that pet owners sometimes purchase pet clothing to match their own.

Ralph Lauren dog polo shirt

The Board found it likely that "consumers, upon encountering both marks being used on the respective goods, would mistakenly believe that the pet and human clothing are intended to be complementary by matching and, therefore, originate from the same source."

Classes of customers: The Board perceptively pointed out that pet owners, not pets, purchase pet clothing, and therefore there is clearly an overlap in customers for human and pet apparel.

And so the Board affirmed the refusal to register.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.


At 8:54 AM, Anonymous Orrin A. Falby said...

Its interesting that there was no requirement to disclaim the peace sign for any of these marks.

At 9:06 AM, Blogger John L. Welch said...

I guess sometimes the PTO's bark is worse that its bite.

At 8:56 PM, Anonymous Anonymous said...

"The Board perceptively pointed out that pet owners, not pets, purchase pet clothing, and therefore there is clearly an overlap in customers for human and pet apparel."

Like with yesterday's Supreme Court decision on DOMA, I'm glad to see that the TTAB is taking on such difficult issues.


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