Tuesday, September 06, 2016

TTAB Test: Are These Two "K4K & Design" Marks Confusable for Clothing?

The USPTO refused registration of the mark K4K in the form shown below left for "cycling shorts; hats; shirts;shorts; socks; sweatshirts; tank tops," finding it likely to cause confusion with the mark K4K in the design form shown below right, for "sarongs." All clothing items are related, right? And the marks are pronounced the same, right? So how do you think this came out? In re Shane Marquess, Serial No. 86478749 (September 1, 2016) [not precedential].

Relatedness of the Goods: The Examining Attorney relied on printouts from eight websites in contending that the goods are "highly related:" Land's End, Fair Winds Sarongs, Macy's, Neiman Marcus, Nordstrom, J.C. Penney, Sears, and L.L. Bean. She argued that the Land's End, Fair Winds Sarong, and L.L. Bean websites demonstrate the use of the same brand for sarongs and for certain of the goods identified in the application.

The Board was not impressed. The three websites did not reveal the actual brand or trademark used in connection with the goods. Land's End and L.L. Bean may sell these goods under a house brand, but that is not evident from the website printouts. The Board noted the lack of third-party registration evidence that is usually submitted to show relatedness of goods.

Nor did the evidence establish that the channels of trade are the same. Other then Fair Winds, the website retailers offer a wide variety of clothing and other goods. Sarongs do not appear to be a common article of clothing. Only the Sears.com website shows more than a handful of sarongs, but that website is merely a conduit for Overstock.com. Thus the evidence did not support a finding that consumers are accustomed to encountering sarongs in the same trade channels as the common articles of clothing listed in the subject application.

The USPTO failed to show a strong relationship between the involved goods, nor did it show that the goods are similar in function or purpose. Applicant's goods are more traditional and common, whereas a sarong is "better known as a traditional Malaysian or Pacific islands garment."

The marks: Although both marks are highly stylized combinations of K4K and would be pronounced the same way, the Board agreed with applicant that the number "4" figures more prominently in his mark but is somewhat hidden in the cited mark. In the latter, the "K" letters are comprised of a "spun-rope" design, and the first "K" is rotated "face-up," raising a question whether consumers will even perceive the letter "K." In short, the marks are "visually very different," and this dissimilarity outweighs the fact that the marks both incorporate K4K.

In sum, "[t]he significant and cumulative differences between the marks and the types of goods sold thereunder persuade us that confusion is unlikely to occur among consumers."

Read comments and post your comment here.

TTABlog comment: Do you find anything sarong with this decision?

Text Copyright John L. Welch 2016.


At 9:28 AM, Anonymous Anonymous said...

confusingly similar to KKK?

At 10:17 AM, Anonymous Anonymous said...

Matthew H. Swyers of The Trademark Company won this case. Perhaps the Board is trying to placate him with the his lawsuit pending.

At 11:24 AM, Blogger John L. Welch said...

RT: I get tired of that same old line.

At 11:40 AM, Anonymous Anonymous said...

So did the Board make a negative inference regarding the lack of third party registrations featuring the same goods? Odd result no doubt.


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