Monday, December 22, 2014

Precedential No. 44: TTAB Test - Are "REDNECK RACEGIRL & Design" and "RACEGIRL" Confusable for Clothing?

Lisa Covalinski applied to register the mark REDNECK RACEGIRL in the design form shown below, for athletic apparel, including shirts, hats, and caps, but the USPTO refused registration, deeming the mark confusingly similar to the registered mark RACEGIRL for various clothing items, including shirts, hats, and caps. The goods are obviously legally identical, but are the marks close enough? Doesn't the "double R" in applicant's mark predominate and serve to distinguish the marks? How do you think this came out? In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) [precedential].

The Board found confusion unlikely because of the "crucial differences" in the marks. The graphic elements of the applied-for mark "serve not only to draw attention to the RR letters apart from the wording, but also make the letters that form the 'a-c-e' of the word 'RACEGIRL' difficult to notice." Consumers would be likely to encounter applicant's clothing items in a retail setting, on hang tags or neck labels, and "[i]n that context, the visual impression of the mark is likely to be more important."

The examining attorney maintained that the words REDNECK RACEGIRL are the dominant feature of applicant's mark because the literal portion of a word + design mark generally makes the more significant impact on the consumer. The Board, however, observed that the word portion is not always dominant, citing several prior Board decisions in which the design was deemed dominant.

The Board noted that in In re Viterra, the CAFC acknowledged the general rule when finding that the word portion predominated in the registered mark X-Seed & Design (shown below).

But in Viterra, the CAFC also found no inconsistency with the Board's ruling in In re White Rock Distilleries, Inc., where the Board found no likelihood of confusion between VOLTA for caffeine-induced vodka and TERZA VOLTA & Design for wines (below), due to the prominence of the design.

And so the Board found the first du Pont factor dispositive, and it reversed the refusal.

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Text Copyright John L. Welch 2014.


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