Test Your TTAB Judge-Ability: Are These Two Avian Design Marks Confusable for Clothing?
Michael R. Longshore sought to register the mark shown below left, for various clothing items, but Retail Royalty opposed, claiming a likelihood of confusion with its registered mark shown below right, for overlapping clothing items (jackets, shirts, pants, footwear and headwear being included in both the opposed application and the registration). Did the application take flight? Or was it shot down by opposer? Retail Royalty Company v. Michael R. Longshore, Opposition No. 91192917 (January 21, 2014) [not precedential].
Applicant Longshore feebly argued that its clothing line is "inspirational wear," but there was no such limitation in his application, nor was the cited registration restricted to non-inspirational clothing. Moreover, since the goods overlap in part, the Board must presume that the involved goods move in the same channels of trade to the same classes of consumers.
Applicant argued that opposer's mark is weak because there are numerous bird marks in use for clothing, but his proof consisted of one website with no evidence regarding customers or trading area or website views. In any case, a single third-party use of a mark (HOLLISTER CALIFORNIA & Design) that includes a silhouette of a bird is not enough to show that opposer's mark is weak. And so the Board found opposer's mark to be arbitrary and inherently strong.
Turning to the marks, the Board noted for the umpteenth time that when the goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. When the marks in issue are design marks, the test for similarity is (not surprisingly) a visual one. Moreover, side-by-side comparison of the two marks is not the test: the proper focus is on the average consumer who retains a general rather than a specific impression of the marks.
Here, specific differences between the marks are detectable when they are placed side-by-side. Even then, however, they engender similar commercial impressions: a dove in flight with wings spread. Noting that the marks are arbitrary when used for clothing, the Board found the marks to be similar in appearance and commercial impression.
And so the Board sustained the opposition.
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Text Copyright John L. Welch 2014.