Thursday, January 23, 2014

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 Retail Royalty Company v. Michael R. Longshore, Opposition No. 91192917 (January 21, 2014) [not precedential].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.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.


At 1:37 PM, Anonymous Roberto Ledesma said...

surprised by this outcome ... but I see applicant was pro se ... a decent trademark attorney would have presented stronger arguments and probably prevailed

At 4:06 PM, Anonymous Anonymous said...

After comparing the marks, I agree with the USPTO that both marks are similar from a visual standpoint (both marks depict a dove and emphasize a bird in flight). I also agree with the UPSPO that using a bird mark to identify clothing is arbitrary. However, I think the applicant can avoid his likelihood of confusion issue by changing his application in the following ways. First, he can still use a dove, but he would need position it differently, make it more detailed, or create a composite mark by adding words or graphics to it. Second, he needs to limit his channels of trade and classes of targeted consumers (gender/age). In his application, he does not have limitations on the types of clothing he plans on selling. If he were to limit his channels of trade and classes of targeted consumers, he could potentially make a sophisticated purchaser argument. Here, the opposer is Aerie, a company that mainly sells women’s lingerie. I think the applicant could make an argument that a general clothing consumer would be able to tell the difference between a mark associated with women’s lingerie and a mark associated with inspirational t-shirts. However, since the marks are currently very similar and the goods associated with each are essentially identical (t-shirts/potential for other articles of clothing Aerie makes), the sophisticated consumer argument would likely be unpersuasive.

At 1:29 PM, Anonymous Abdullah Alobaid said...

After reading the opposition, It is not surprising and almost predictable that the board would have reached this conclusion, for the board had applied the appropriate factors in determining the likelihood of confusion between the two marks. To be more precise, the board identified the strength of the opposer’s mark as arbitrary and inherently distinctive. Furthermore, the board found that both the applicant and the opposer are using their marks on similar, in part, goods; they both involved similar goods that are presumably moved in the same channels of trade to the same classes of consumers. Finally, by testing the similarity of those two design marks on the bases of visual similarity and overall commercial impression, the board concluded that they are similar in terms of appearance and commercial impression despite the small differences found in side-by-side comparison. Therefore, the registration to applicant was refused under 15 U.S.C. § 1052(d).

At 1:10 PM, Anonymous Julie Vo said...

I also agree with the USPTO that the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered. In addition, the USPTO found a likelihood of confusion because the goods are in part identical with a presumption that they move in the same channels of trade and are sold to the same classes of consumers. Although the applicant submitted evidence that opposer's mark is weak in the form of a third-party website displaying the mark HOLLISTER and a bird design, the USPTO found the evidence lacking because no evidence regarding customers or trading area or website views was presented. Perhaps the applicant should have investigated the HOLLISTER mark further to produce the appropriate evidence the court required. I also believe that applicant’s best chance of registering his mark lies in limiting his channels of trade and classes of consumers and to limit his identification of goods to “inspirational wear” on his application. Because the scope of the registration is defined by its application, limiting the channels of trade and classes of consumers would help prevent the court from presuming that applicant’s goods and opposer’s goods move in the same channels of trade and are sold to the same classes of consumers. In response to the comment above about applicant’s potential to make a sophisticated purchaser argument, I agree that it would be an unpersuasive and weak argument. First, the opposer, Aerie, does not only sell women's lingerie, but manufactures women's apparel as well. The Aerie mark is currently registered under Classes 14 (jewelry), 18(tote bags), 35(retail store services), and 25, which includes "wearing apparel, clothing, and clothing accessories...." In my opinion as an ordinary consumer who has shopped at Aerie, I don't associate them with only women's lingerie. Thus, I think that applicant's argument would fail because it is likely to confuse an ordinary customer as to the source of the goods.

At 1:50 PM, Blogger John L. Welch said...

Don't forget that, when comparing the goods, the Board will not limit the identified goods in the application or registration, nor will it restrict the channels of trade, based on real world evidence. Even if applicant had limited his goods to "inspirational clothing," those goods would still fall within the identification in the registration.


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