TTAB Reverses 2(d) Refusal of SOUTH BEACH SWIMWEAR for Swimwear

Finding that the term SOUTH BEACH is not necessarily the dominant portion of the cited mark, the Board reversed a Section 2(d) refusal to register SOUTH BEACH SWIMWEAR, in the design form shown below, for "Swimsuits; Swimwear excluding T-shirts, polo shirts, tank tops, hats, visors, aprons" [SWIMWEAR disclaimed], finding the mark not likely to cause confusion with the registered mark SOUTH BEACH WINE & FOOD FESTIVAL for "T-shirts, polo shirts, tank tops, hats, visors, aprons." Applicant overcame a Section 2(e)(2) geographical descriptiveness refusal by claiming acquired distinctiveness under Section 2(f); the cited mark was registered under Section 2(f). In re Michael D. Mathes, Serial No. 85892299 (December 12, 2014) [not precedential].

Although applicant had apparently carved out of its application the goods covered by the cited registration, the Board still found the involved goods to be related for Section 2(d) purposes. Swimwear and t-shirts are commonplace, casual items that might be warn together. Internet evidence showed that these goods have been offered by a single company under the same trademark: e.g., NIKE, UNDER ARMOUR, ADIDAS, GAP, HOLLISTER, and OAKLEY. There was no need to consider the other goods in the registration, because if a likelihood of confusion is found between any item in a given class in an application, with an item in a cited registration, that suffices to support a Section 2(d) refusal of the entire class of goods.

The examining attorney argued that the Board must presume that the goods travel through the same trade channels, but the Board questioned whether the goods were close enough to justify application of that presumption. In any case, the evidence established that the goods travel through at least one trade channel in common: on-line retail stores featuring apparel or sporting goods (e.g., GAP, Kohl’s, Target, JCPenney and Macy’s).

Applicant contended that the goods in fact are sold in different channels, since applicant's goods are not found at registrant's website or festival. That, of course, was irrelevant, since the Board must consider the goods as identified in the application and cited registration, where there appeared no limitations on channels of trade. In other words:

The relevant question is not whether the specific goods of Applicant and Registrant are actually marketed in the same trade channels. It is whether goods of the types identified in the application and the registration are typically marketed in the same or related channels.

Applicant further contended that its customers are sophisticated, "detail oriented consumers looking for swimsuits; as opposed to Registrant’s consumers who are interested in t-shirts, aprons and the like in connection with a festival that happens once a year." There was, however, no evidence to support that assertion. The Board must presume that registrant’s goods would be sold under normal retail conditions found in the types of stores that sell such goods.

Turning to the marks, the examining attorney maintained that the phrase SOUTH BEACH is the dominant portion of both marks, since it appears first in the marks and since SWIMWEAR has been disclaimed and WINE & FOOD FESTIVAL immediately conveys to consumers that registrant's goods are sold at such events.

The Board, however, observed that SOUTH BEACH "is inherently a weak source indicator because it is geographically descriptive." identifying a well-known neighborhood of Miami Beach. "Customers would therefore readily entertain the possibility that the term SOUTH BEACH might be adopted by any merchant located in the South Beach neighborhood." The Board agreed that SOUTH BEACH is dominant in applicant's mark, since SWIMWEAR is generic for the goods. However, WINE & FOOD FESTIVAL is not the generic name for registrant's goods. To the extent that it is descriptive, it conveys information about the association of the goods with an event, not about the nature of the goods themselves.

WINE & FOOD FESTIVAL plays a more important function in identifying the source of Registrant’s goods than does the word SWIMWEAR in Applicant’s mark. We find that SOUTH BEACH and WINE & FOOD FESTIVAL, as applied to Registrant’s goods, are of roughly equal distinctiveness, such that SOUTH BEACH does not merit more weight in our consideration of the mark in its entirety.

The Board concluded that the goods convey "very different commercial impressions." It agreed with applicant that consumers would not expect to find swimwear in a food-related event. Moreover the words FOOD and WINE are arbitrary and incongruous in the context of swimwear. The Board found it highly unlikely that consumers would see a commercial relationship between these two brands.

And so it reversed the refusal to register.

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TTABlog note: Any quarrels with this one?

Text Copyright John L. Welch 2014.