TTAB Test: Is HAMMER for Skateboard Clothing Confusable with HAMMER & Design for Jackets and Hats?

The USPTO refused to register the mark HAMMER for "“Skateboarding clothing, headwear and footwear, namely, beanies; belts; footwear; hats; jackets and socks; pants; shirts; sweatshirts; t-shirts," finding the mark likely to cause confusion with the registered mark HAMMER & Design (shown below) for "jackets and hats." Applicant argued that registrant's goods are bowling-specific, that its own goods are associated with the famous skateboarder, Jim Greco, and that five third-party registrations for marks that include the word "hammer" show that the field is crowded with HAMMER marks. How do you think this came out? In re Hammers USA, Inc., Serial No. 85611025 (February 22, 2016) [not precedential].

The marks: The Board observed that the design in the cited mark merely reinforces the meaning of the word HAMMER. Considering the marks in their entireties, the Board found them to be "quite similar visually." They share a comparable commercial impression and are phonetically identical. Therefore, the first du Pont factor weighed in favor of likelihood of confusion.

The goods: Applicant's identification of goods includes "hats" and "jackets," and those goods overlap with those of the cited registration. Even narrowing applicant's goods to skateboarding clothes, they still fall within the scope of the cited registration.

Applicant contended that the association of its goods with Jim Greco (a famous skateboarder), along with its focus on skateboarding and Action Sports-oriented shops, differentiates its goods from those of the registration, which goods are "bowling-specific" and "purposefully aimed at professional bowlers." The Board, not surprisingly, rejected this argument, since there are no such limitations in the cited registration and therefore registrant's goods must be presumed to travel in all normal channels of trade to all potential customers. In short, the identification of goods as stated in the registration is controlling, regardless of what actually occurs in the marketplace.

The Board accordingly found that the goods and trade channels overlap, and these du Pont factors favor a finding of likely confusion.

Third-party marks: Finally, applicant maintained that the clothing field is crowded with HAMMER marks, and its mark should be allowed to join the field. It pointed to five third-party registrations, but the Board agreed with Examining Attorney Andrew C. Leaser that these five registered marks contain other matter that distinguish them from the cited mark. Applicant's mark includes no additional distinguishing matter.

The Board found that this batch of third-party registrations "does not establish that consumers could rely on any difference in Applicant's mark to distinguish it from that in the Registration." The Board considered this du Pont factor to be neutral.

Decision: The Board affirmed the refusal.

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TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2016.