TTAB Test: Is CALIFORNIA REPUBLIC Confusable With REPUBLIK OF KALIFORNIA, for Clothing?
Don Calder applied to register the mark CALIFORNIA REPUBLIC for various clothing items, but the USPTO refused registration on the ground of likelihood of confusion with the registered mark shown below, for overlapping clothing items [CALIFORNIA disclaimed in both marks]. The Examining Attorney maintained that the words are the dominant part of the cited mark, and that CALIFORNIA REPUBLIC and REPUBLIK OF CALIFORNIA are similar. How do you think this came out? In re Don Calder, Serial No. 85143799 (January 29, 2015) [not precedential].
The Board found that the design element is dominant in the cited mark, since it is much larger than the words REPUBLIK OF KALIFORNIA and is "by far the most visually significant element of the mark." Although it is true that the words in a design + word mark are often the dominant portion, that is not always true. [See, e.g., the recent REDNECK RACEGIRL decision, In re Covalinski TTABlogged here].
In this case, due to the large size of the design element, we find that the design and wording REPUBLIK OF KALIFORNIA work together to create the overall commercial impression described below as a former Soviet state, such that the wording does not dominate the design. Moreover, to the extent Applicant’s and Registrant’s goods are articles of clothing, “consumers would be likely to encounter the mark in a retail setting on hang tags or neck labels. In that context the visual impression of the mark is likely to be more important." [quoting Covalinski].
The order in which the words appear in the two marks, and the use of the letter "K" in the cited mark, result in differing appearances and connotations; the word portion of the cited mark calls to mind states of the former Soviet Union, whereas the applied-for mark does not.
And so the Board reversed the refusal to register.
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Text Copyright John L. Welch 2015.