Friday, October 30, 2015

"EVADE OFFSHORE ARMOR (Stylized)" Mark Survives Under Armour's Section 2(d) Attack

[Caveat: Yours Truly represented Defendant Evade LLC in this consolidated proceeding, and so editorial wise-crackery will be kept to a minimum]. The Board dismissed Under Armour's petition for cancellation of a registration for the mark EVADE OFFSHORE ARMOR (Stylized) (shown below), for "shirts, hats, visors, sweatshirts, jackets, shorts in the field of fishing," finding the mark not likely to cause confusion with Under Amour's registered marks UNDER ARMOUR and ARMOUR for various clothing items. However, as to Defendant's registration for the mark EVADE OFFSHORE ARMOR and its application for EVADE OUTDOOR ARMOR, both in standard character form, the Board found the marks confusable with Plaintiff's ARMOUR mark. Under Armour, Inc. v. Evade, LLC, Opposition No. 91195620 and Cancellation No. 92052716 (October 29, 2015) [not precedential], affirmed per curiam, Appeal No. 16-1531 (Fed. Cir. February 28, 2017).

OFFSHORE ARMOUR: Plaintiff UA claimed to own common law rights in the mark OFFSHORE ARMOUR, based on an assignment from a third party, executed [the assignment, not the third party - ed.] after the commencement of the proceedings. However UA failed to prove use of that mark prior to Evade's constructive first use dates, and so this contention went nowhere.

EVADE OFFSHORE ARMOR (Stylized): Evade did not contest the fame of the UNDER ARMOUR mark for clothing. Nor did it challenge the similarity of the goods, channels of trade, or classes of customers. The Board found that the mark UNDER ARMOUR is famous for Section 2(d) purposes, but UA did not establish that the mark ARMOUR is famous.

Evade contended that the impact of the shared term "armour" is diminished due to both its inherent weakness and the wide-spread third-party use of that term in connection with products having a "protective" feature. The Board, however, pooh-poohed that evidence: "it has not been shown that the same suggestive meaning is applicable in the context of the involved goods, namely, general articles of clothing or apparel for fishing."

Turning to the issue of the similarity of the marks, the Board first considered Evade's stylized mark versus UA's ARMOUR mark, noting that there is no need to consider the UNDER ARMOUR mark if no likelihood of confusion is found with respect to the ARMOUR mark. The Board had "little hesitation" in finding the marks to be "overall dissimilar" because the arbitrary word EVADE dominates the stylized mark: consumers will emphasize the EVADE portion of the mark and will pay less attention to the additional wording.

And so the Board dismissed the Section 2(d) claim against the Registration for the mark EVADE OFFSHORE ARMOR in stylized form.

EVADE OFFSHORE ARMOR (Standard Characters): The Board again considered the EVADE OFFSHORE ARMOR mark in comparison to UA's ARMOUR mark. The fact that Evade incorporates the ARMOUR mark "is significant and creates a scenario where a likelihood of confusion has frequently been found." The word "armour" is at most only slightly suggestive of common articles of clothing, and thus is not to be discounted in the analysis. Moreover, the word OFFSHORE is somewhat suggestive of clothing used for fishing.

The Board observed that EVADE is also defendant's name, and so "consumers familiar with this information may consider this as merely the addition of a trade name."

And so the Board concluded that EVADE OFFSHORE ARMOR, in standard character form, is confusingly similar to the mark ARMOUR, and it granted the petition for cancellation of that registration.

EVADE OUTDOOR ARMOR (Standard Characters): The Board noted that OUTDOOR is descriptive for clothing used in "outdoor" activities. Considering the marks in their entireties, and following the reasoning set forth immediately above, the Board found Evade's mark to be confusingly similar to the ARMOUR mark, and it therefore sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Well, do you think the Board got this one right? Two-thirds right? Two-thirds wrong?

In an earlier ruling in this case, the Board dismissed UA's dilution claims directed at Evade's two registered marks, ruling that the claims were barred by the (now non-existent) "federal registration defense." TTABlogged here.

Text Copyright John L. Welch 2015.


At 11:14 AM, Anonymous Anonymous said...


At 4:10 PM, Anonymous Anonymous said...

If UA was able to properly introduce and authenticate the priority of the mark it acquired, do you think it would have prevailed as to the design mark along the same thinking you note that EVADE may be perceived as merely adding a trade name to someone else's mark? Also, I think there is a typo where you say UA defeated the stylized mark-- it was the standard character mark.

At 4:59 PM, Anonymous Anonymous said...

Been interesting to see what would have happened if the stylized mark was filed and registered. After this was secured, then filed separate applications for the standard character marks. Same result?

At 4:09 PM, Blogger Unknown said...

I don't think these marks are similar at all. I would never think of them or their products as just "Armour," and everything is branded as "UA" or with the logo. On their web site I see other sub-brands, and use of "Gameday Armour," but no current use of just "Armour" for any product by UA (I did not see the hat they used as their specimen). I am glad you prevailed on part of it, anyway.

At 12:03 PM, Blogger halbie said...

Standard decision from Board that's divorced from how actual humans perceive marks. These marks aren't close. TM law runs further amok.


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