Is BUFFALO JAYNE Confusable with BUFFALO for Clothing?

1724982 Alberta ULC opposed an application to register the mark BUFFALO JAYNE for various clothing items, claiming a likelihood of confusion with the registered marks BUFFALO and BUFFALO DAVID BITTON for overlapping clothing items (women's and men's pants). Applicant pointed to twelve (12) registered marks containing the word BUFFALO in International Class 25 (including BUFFALO EXCHANGE, BUFFALO BAY, and BUFFALO WORK GLOVES) in arguing that opposer's mark(s) are weak. How do you think this came out? 1724982 Alberta ULC v. Buffalo Jakson Trading Co., LLC, Opposition No. 91223331 (December 14, 2016) [not precedential].

The parties agreed to invoke the Board's ACR procedure, submitting declaration testimony and supporting evidence. The Board focused on oppposer's mark BUFFALO, since it is closer to the applied-for mark than BUFFALO DAVID BITTON.

The Board found the involved goods to be identical or closely related. Because there were no restrictions as to channels of trade or classes of consumers in the involved application or registration, the Board presumed that the goods travel in the same, normal channels of trade for those goods, to the same classes of consumers.

Since the goods are identical in part, a lesser degree of similarity as to the marks is necessary to support a finding of likely confusion. Moreover, because the word BUFFALO is the first word in Applicant's mark, it is the part that is likely to be impressed upon the mind of the consumer and remembered. [I think that is less true when the mark sounds like a first and last name - ed.]. In addition, applicant's mark incorporates the cited mark in its entirety. [That begs the question - ed.].

To the extent that the word BUFFALO connotes "ruggedness, outdoors, wild, western," that same connotation applies to BUFFALO JAYNE clothing "designed for a cowboy has now met its counterpart in a cowgirl named Jayne." (sic). The Board concluded that the marks are similar in sight, sound, meaning and commercial impressions, and the first duPont favors opposer, particularly in view of the legal identity of the overlapping goods.

Applicant's sales figures and promotional efforts for more than two decades convinced the Board that BUFFALO, while not famous, is well-known for men's and women's pants.

Applicant argued that the cited mark should be given a narrow scope of protection in view of twelve prior registrations for marks containing the word BUFFALO. However, there was no evidence that these registered marks were in use, and therefore they can be given no weight on the issue of likelihood of confusion, i.e., in determining scope of protection.

However, registrations may be probative "if they tend to demonstrate that [BUFFALO] is suggestive or descriptive of certain goods and hence is entitled to a narrow scope of protection." Here, the registrations did not show that the term BUFFALO has a commonly understood meaning that is suggestive or descriptive of "men's and women's pants." Consumers may perceive that some of the goods could be made from buffalo hide, but that same connotation would apply, if at all, equally to applicant's and opposer's goods. [If it did so apply, wouldn't that make the marks more distinguishable? - ed.]

The Board found that opposer had carried its burden of persuasion by a preponderance of the evidence, and it sustained the opposition.

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TTABlog comment: Reminder: get evidence of third-party use.

Text Copyright John L. Welch 2016.