Wednesday, December 11, 2013

Test Your TTAB Judge-Ability: Are Socks Related to Jackets? How About Sunglass Lenses and Sunglasses?

Here for your contemplation are two appeals from Section 2(d) refusals, one involving socks and jackets, the other sunglass lenses and sunglasses. Let's see if you can come up with the "right" decisions.

In re Garment Group, Inc., Serial No. 85512862 (November 29, 2013) [not precedential]. Applicant's mark TECHWOOL for "socks made substantially or partly of wool," was refused registration in view of the registered mark TECHNOWOOL for "clothing, namely, outerwear, namely, jackets and [sic] made in part or in whole of wool."

The Board found the marks to be similar, noting that both marks suggest garments made of wool with "technical" or "technological" performance features. As to the goods, Examining Attorney Curtis French submitted 19 use-based, third-party registrations covering both jackets and socks. Applicant argued that the goods are not related because they are "sold in different areas of stores, are worn on different parts of the body, and would not be purchased in place of one another."

How would you decide?

In re Spy Optic Inc., Serial No. 85588592 (November 29, 2013) [not precedential]. The mark VICTORY for "sunglass lenses" was refused registration in view of the registered mark VICTORY COLLECTION & Design (shown below) for, inter alia, sunglasses and sunglass frames [COLLECTION disclaimed].

The Board found the word VICTORY to be the dominant portion of the cited mark. The visual and aural dissimilarities are "far outweighed" by the strong similarities in connotation and overall commercial impression.

As to the goods, applicant contended that sunglass lenses are purchased by manufacturers, while sunglasses are purchased by the end user. The Board pointed out, however, that there was no such limitation in the opposed application. Examining Attorney Siddharth Jagannathan submitted Internet evidence showing sunglass lenses sold in the same trade channels as sunglasses and sunglass frames, as well as a dozen third-party registrations covering both sunglass lenses and sunglasses.

What do you think?

Read comments and post your comment here.

TTABlog note:I'm not going to give the answer this time.

Text Copyright John L. Welch 2013.


At 10:32 AM, Anonymous Anonymous said...

In the sunglasses case it sounds like the Board was giving an invitation to refile with a description limited to certain channels of trade. Which is one of the reason an appeal that is not likely to succeed can be useful.

At 5:47 PM, Anonymous Anonymous said...

I'm not going to read your post next time.


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