Thursday, November 20, 2014

TTAB No Brainer? "GO PRO OR GO HOME" Confusable With "GO PRO" for Clothing

Applicant Go Pro Workouts trotted out several of the most frequent losing TTAB arguments in this Section 2(d) opposition to registration of GO PRO OR GO HOME for various clothing items. The Board not surprisingly found the mark likely to cause confusion with the registered mark GO PRO for overlapping clothing items. Gary Hale v. Go Pro Workouts, LLC, Opposition No. 91211810 (November 18, 2014) [not precedential].

The parties agreed to Accelerated Case Resolution (ACR), which resulted in a faster, although perhaps less expensive, defeat for applicant.

Because the goods overlap, the Board presumed that they travel through the same, normal channels of trade to the same classes of consumers. Applicant argued that opposer sells only clothing, while opposer's goods are ancillary to its sports training services. So, applicant maintained, its customers are athletes who train with applicant. That argument, the Board found, had little merit because the Board must make its determination based on the goods identified in the opposed application, regardless of what other goods and services applicant offers. Here there were no limitations on the channels of trade or classes of consumers.

Applicant further contended that its goods are purchased with an enhanced degree of care because a visitor to its website must register for a workout or nutritional plan before he or she can purchase any clothing item. The Board again pointed out there was corresponding limitation in applicant's identification of goods, and even if there were there was no evidence that purchasers of opposer Hale's products exercise extra care, and they may be confused by the marks.

As to the marks, applicant attempted to distinguish them by pointing to the dietary supplements and sports training services that it provides in connection with its mark, as if that significantly change the meaning of the mark. The Board again observed that applicant's supplements and training services are not part of this proceeding.

The Board found the marks to be similar in sound, appearance, meaning, and commercial impression. Notably, opposer's GO PRO s mark is contained in its entirety in applicant's mark and appears as the first part of the latter mark.

Applicant's assertion that GO PRO is in common use in the marketplace was not supported by the evidence. Applicant pointed to some three years of concurrent use of the involved marks with no evidence of actual confusion, but the Board pooh-poohed that argument. Three years is a relatively short period of time, and the fact that both parties' goods are sold on the Internet does not establish that there has been a meaningful opportunity for confusion to occur. Moreover, evidence of actual confusion is notoriously difficult to obtain, and the test is likelihood of confusion, not actual confusion.

To the extent that applicant argued that opposer's use of his mark was minimal and therefore confusion was unlikely, the Board noted that the rights flowing from a federal registration "do not vary with the size of the registrants."

The Board concluded that, even if GO PRO is a weak mark, it is entitled to protection, since "likelihood of confusion is to be avoided, as much between 'weak' marks as between 'strong' marks, or as between a 'weak' and 'strong' mark."

Read comments and post your comment here

TTABlog note: In short, the Board told applicant to GO HOME.

Text Copyright John L. Welch 2014.


At 9:23 AM, Anonymous Gene Bolmarcich said...

I would LOVE to know what the Board means by that last statement (from the King's Candy case). There's something deep in there but I'm just not sure what it is, especially the part about confusion between weak and strong marks (does that mean strength of the applicant's mark is as relevant as strength of the prior mark?). I always wondered why applicant's do not argue that THEIR mark is weak...doesn't that help their case as much as saying the prior mark is weak?

At 11:11 AM, Anonymous Joe Dreitler said...

Just out of curiosity, how do that make it through to publication?


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