Wednesday, September 07, 2016

TTAB Test: Is "DUFFY" Confusable With "PETER DUFFY" For Clothing?

The USPTO refused registration of the mark DUFFY for "dresses; hats; jackets; pants; shirts; shorts; skirts; sweaters; sweatshirts; tank tops; underwear," finding the mark likely to cause confusion with the registered mark PETER DUFFY, in the stylized form shown below, for "clothing, namely, jackets, coats, fur coats, fur stoles, fur cloaks, fur jackets, fur muffs, fur scarves, fur hats, fur earmuffs, fur capes, fur ponchos, and fur skirts." Applicant DZ Trading appealed. Well, the goods overlap, but what about the marks? How do you think this came out? In re DZ Trading Ltd., Serial No. 85759557 (August 26, 2016) [not precedential].

The Goods: Both the application and the cited registration include "jackets." Also, the "hats" and "skirts" of the application encompass registrant's "fur hats" and "fur skirts." Thus the involved goods are in-part identical. Because there are no stated restrictions on channels of trade, the Board must presume that these identical goods travel in the same, normal channels to the same classes of consumers.

The Marks: As we know, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Applicant contended that the term DUFFY engenders the commercial impression of a nickname, like "Murph" or "Chip," whereas the cited mark projects the image of the name of a specific individual. The Board, however, found that the given name "Peter" is ancillary to the commercial impression created by the surname "Duffy."

Because “Duffy” is the dominant portion of the cited mark, it is the term most likely to be remembered. Whether Applicant’s mark DUFFY is perceived as a nickname or surname is not critical; what matters is that the cited mark consists of only two terms, and that the dominant term forms the entirety of Applicant’s mark. See In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1219 (TTAB 2008) (SAM EDELMAN is similar to EDLEMAN).

Applicant also pointed to the highly stylized font of the cited mark, but the Board noted that, because the applied-for mark is in standard characters, applicant could in theory use its mark in the same cursive style as the cited mark.

Finally, applicant pointed to the lack of any evidence of actual confusion, but the Board once again observed that the issue is likelihood of confusion, not actual confusion. The lack of evidence of actual confusion carries little weight, particularly in the ex parte context where the other party has no chance to be heard on the issue.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Would Joe Duffy be confusable with Peter Duffy? I don't know. I'd have to see their pictures.

Text Copyright John L. Welch 2016.


At 7:51 AM, Anonymous Anonymous said...

John, will you be performing here all week?

At 1:18 PM, Anonymous Anonymous said...

If Duffy was first, I would venture a guess that PETER DUFFY would likely zip right through.

At 11:02 AM, Anonymous Anonymous said...

Order should make no difference but it does and that is one of the biggest mistakes made by the USPTO


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