Thursday, June 23, 2016

TTAB Test: Are “INDI” and “INDY” Confusable for Clothing Items?

The USPTO refused registration of the mark INDI for various clothing items, including shirts and headwear, finding the mark likely to cause confusion with the registered mark INDY for “t-shirts” and “hats.” The goods are, in part, legally identical, but what about the marks? How do you think this came out? In re Strong Current, Ltd., Serial No. 86440263 (June 16, 2016) [not precedential].

The Examining attorney relied on the similarity of the marks in sound and appearance. Applicant conceded that the marks are likely to be pronounced identically and look similar. The Board agreed.

The Board, however, found pivotal the differences in connotation and commercial impression. The primary meanings of INDY are (1) “a form of auto racing” involving a banked, regular, typically oval track, and (2) a nickname for the city of Indianapolis. The mark INDI, with its fanciful spelling, has no such significance. Consequently, consumers are unlikely to assume that the involved goods come from the same source.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? I think the marks are confusable. BTW: Guess who owns the INDY registration?

Text Copyright John L. Welch 2016.


At 9:57 AM, Anonymous Anonymous said...

Clearly confusingly similar in my humble opinion.
Many products are ordered verbally (phone). The marks are identical in sound

At 10:30 AM, Anonymous Anonymous said...

Poor reasoning by the TTAB in deciding INDY for clothing is not confusingly similar to INDI for clothing. The Board completely ignored that there is no evidence consumers would understand INDY to mean "auto racing" or a nickname for "Indianapolis," at least outside of people in Indianapolis. When was the last time you heard a person say, "I'm from Indy." The Board also completely ignored the fact that when you are dealing with the same goods, the marks should be more disparate. The Board completely ignored that when in doubt, doubt should be resolved in favor of the trademark holder. The Board completely ignored that these goods and marks are presumed to travel in the same channels of trade. The Board complete ignored that they can both be advertised via radio, and therefore, consumers would have no opportunity to see the spelling differences. And I can go on and on. If the applicant lost the appeal, this would definitely have found its way to the "WHYA" column.

At 11:34 AM, Blogger Gene Bolmarcich said...

This is a SHOCKING decision. In short the Board found dissimilar, marks that look and sound the same, one of which is only a very slight misspelling of the other. The only difference was that one mark had a meaning and the other had no meaning (at least as misspelled). But without any meaning of its own isn't INDI just a slight misspelling of INDY??. I only wish this was precedential as I'd be citing it in a vast majority of OA responses.

At 12:17 PM, Anonymous Anonymous said...

Don't poor spellers count in the confusion analisys?

At 2:48 AM, Anonymous John C. said...

I agree with most of the comments here. This decision seems out of place compared to many other decisions with marks that differ only in spelling. This decision also runs counter to much of the sound reasoning and evidence produced from the trademark examiners with whom I have worked over the years.

At 7:35 AM, Blogger John L. Welch said...

From Friday's CAFC decision finding MAYARI not confusingly similar to MAYA, both for wine:
"the Board correctly found that the unfamiliar MAYARI is distinguishable from the familiar MAYA, and that the marks, considered in their entireties, are dissimilar as to appearance, sound, meaning, and overall commercial impression."

At 8:58 AM, Anonymous Anonymous said...

I’ll be contrarian here and say that although it’s close to my mind, I think the Board probably got this one right.

Although of course each case must be decided on its own facts, there is a line of cases finding no confusion where one mark has a recognized meaning and the other mark has none. See, e.g., Laboratoires du Dr. N.G. Payot Etablissement v. Southwestern Classics Collection Ltd., 3 U.S.P.Q.2d 1600, 1606 (T.T.A.B. 1987) (“[T]he fact remains that PEYOTE is an ordinary word found in the dictionary. . . . The term PAYOT, by contrast, has no ordinary meaning . . . . We believe that the existence of one mark consisting of an ordinary word having a particular connotation, contrasted with an unfamiliar term having a quite different connotation, results in the marks’ being sufficiently distinguishable, when compared in their entireties, despite any technical similarities in possible pronunciations of the respective terms. We remain convinced that the familiar is readily distinguishable from the unfamiliar and we note a line of decisions recognizing the distinction between common and uncommon terms used as trademarks.”).


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