Monday, June 23, 2014

BOMBER GEAR for Dry Clothing Confusable With BOMBER(S) for Hats and Shirts, Says TTAB

The Board affirmed a Section 2(d) refusal to register BOMBER GEAR for "dry tops, dry pants, and dry shorts used for kayaking" [GEAR disclaimed], finding the mark likely to cause confusion with the registered marks BOMBER for hats and BOMBERS for shirts, the cited registrations being owned by two different entities. Applicant pointed to eleven third-party registrations and seven websites for BOMBER-formative marks, arguing that BOMBER is a weak formative. The Board, however, found that argument to be all wet. In re Confluence Holdings Corp., Serial No. 85643399 (June 19, 2014) [not precedential].

The Marks: The Board not surprisingly found the word BOMBER to be the dominant element of applicant's mark, since GEAR is disclaimed and BOMBER appears as the first word in the mark. The Board therefore concluded that the involved marks are similar in appearance, sound, connotation, and commercial impression. [Note my preference for the Oxford comma - ed.].

The eleven third-party marks cited by the applicant included JOURNEYMAN BOMBER, BROWNBOMBERMMA, AFRICVILLE BROWN BOMBERS, BLAKE STREET BOMBERS, BRONX BOMBERS, LONG BOMBERS, and SAYERVILLE BOMBERS. The Board noted that five of the marks are related to sports teams and suggest that the team includes good hitters or good shooters. Two include the term BROWN BOMBER, which may refer to former heavyweight champion Joe Louis.

From these registered marks, the Board could not conclude that the word BOMBER by itself has a particular significance for the goods in the cited registrations. The Board recognized that the registration of BOMBER for hats was based on Section 2(f) acquired distinctiveness (a bomber hat being a type of hat), but because the mark is registered, the Board must presume that it is not merely descriptive.

The seven websites cited by applicant corresponded to seven of the registered marks. Each of those marks has words additional to the word BOMBERS that serve to distinguish the marks. Applicant's mark has nothing to distinguish it other than the generic term GEAR.

And so the Board concluded that the marks BOMBER and BOMBERS are entitled to a normal scope of protection.

The Goods: The Board recognized that the "dry tops" in the subject application are not "shirts." However, the evidence provided by Examining Attorney Miah Rosenberg showed that shirts and dry tops emanate from the same sources and are sold on the same websites. Moreover, shirts and dry tops may be used together. Similarly, hats and caps are used for kayaking, they emanate from the same sources as kayaking clothing, and they are sold in the same channels of trade as kayaking clothing.

Degree of Consumer Care: Although a purchaser of dry clothing will exercise a high degree of care, since those products are not inexpensive, the purchaser may not exercise the same degree of care when purchasing hats and shirts. Consequently, there is a likelihood of noisufnoc esrever [reverse confusion - ed.]. The Board concluded that this fact was neutral or, at most, slightly favored applicant.

Balancing the Factors: Balancing the relevant duPont factors, the Board found confusion likely, and it affirmed the refusal.

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Text Copyright John L. Welch 2014.


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