Test Your TTAB Judge-Ability On These Three Section 2(d) Refusals of "EK" for Hats

New Era Cap Co. applied to register the mark EK in standard character form for "headwear, hats, caps, knit hats and baseball caps," but the PTO refused registration under Section 2(d) in view of three registered marks, depicted below. The first cited mark, owned by the Sigma Kappa Sorority, covers clothing items, including hats, the second is for footwear, and the third for t-shirts, knit tops, shirts and jackets. How do you think this came out? In re New Era Cap Co., Inc., Serial No. 85515684 (July 7, 2014) [not precedential].

As to the first registration, Examining Attorney David Yontef contended that the cited mark is a stylized version of the letters "EK" and would be so perceived and pronounced by customers. However, the record evidence showed that the mark consists of the Greek letters Sigma and Kappa, and that Sigma Kappa is a college sorority in the USA. [Note: the registrations is limited to clothing sold in connection with the sorority - ed.]. The registration stated that the mark consists of the two Greek letters. [But the consuming public doesn't know what statements appear in the registration - ed.]. The Board found the marks so dissimilar that confusion was unlikely, and it reversed that refusal.

As to the other two cited marks, applicant pointed to its ownership of two registrations for the mark EK in stylized form, which co-exist with the cited marks. The Board, however, noted that the instant application is for the letters EK in standard character form, and "if registered, Applicant would have the right to use the mark in any font, style, size, or color, including versions identical to either of the registered marks." The Board therefore agreed with the examining attorney that applicant's mark is virtually identical ... in appearance, sound, connotation and commercial impression, to the registered marks."

As to the goods it the second and third registrations, applicant lamely asserted that they are unrelated to its goods because they would, respectively, be found in different sections of a store or website. The Board, however, pointed out that goods may be related for Section 2(d) purposes even if not identical, and regardless of whether they are displayed together or far apart in the same store. The examining attorney submitted third-party use-based registrations that cover shirts, hats, and shoes under a single mark. Internet evidence also showed that third parties offer the same goods as applicant and these registrants under the same brand name.

And so the Board affirmed the second and third refusals.

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Text Copyright John L. Welch 2014.