TTAB Test: Are These Flying Bird Marks Confusingly Similar?

The University of Houston System applied to register the mark shown below left, for printed materials (Class 16), mugs and cups (Class 21); clothing (Class 25); and educational and entertainment services (Class 41). Opposer Retail Royalty [Think American Eagle] claimed a likelihood of confusion with its registered mark shown below right, for personal products (Class 3); athletic bags (Class 18): Clothing (Class 25): and retail store services featuring a wide range of products, including clothing. How do you think this came out? Retail Royalty Company v. The University of Houston System, Opposition No. 91217413 (March 10, 2017) [not precedential].

The marks: Applicant contended that because there are many registrations and uses of flying bird marks, Opposer's mark should be given limited protection. The Board, however, found that few of the third-party marks were similar to those at issue.

The registrations obviously show that it is not uncommon for others to seek to adopt a mark containing a bird design in connection with clothing; however, the registrations further reflect the availability of an array of bird designs that can be used in marks and do not necessarily bear a resemblance to each other. Indeed, with the exception of a few, we find none of the registered marks bear a strong resemblance to either Opposer’s or Applicant’s mark.

Distinguishing Jack Wolfskin and Juice Generation, the Board found that there were too few third-party registrations and no relevant uses to undermine the strength of opposer's mark.

As to the marks themselves, the presence of the terms UHCL HAWKS imparts a meaning that does not appear in opposer's' mark. Moreover, the verbal portion of applicant's mark is the part that consumers are most likely to refer to when calling for the goods. The Board concluded that the marks are more dissimilar than similar.

However, the marks are not so dissimilar as to rule out likelihood of confusion under all circumstances.

Good and Services: As to applicant's class 16 and 21 goods, the record did not show that it is common for a single entity to provide retail clothing store services and offer goods like applicant's goods under a single mark. And so this factor pointed in favor of applicant as to these goods.

As to class 25 clothing, the goods are legally identical and presumably travel in the same channels of trade to the same classes of consumers. Moreover, when the goods are identical, a lesser degree of similarity is needed to demonstrate a likelihood of confusion.

As to applicant's class 41 educational and entertainment services, Opposer's activities involve "placing advertisements or congratulatory messages for the Big East collegiate sports conference on the billboard above its retail store in New York City. Although consumers would be attracted to the advertising, there is no reason to believe that they would believe opposer to be involved with the service of providing sports entertainment. And so this factor weighed in favor of applicant.

Consumers sophistication: Applicant's class 16, 21, and 25 goods may be inexpensive and purchased on impulse, a factor favoring opposer.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely as to the Class 25 goods, but not as to applicant's Class 16 and 21 goods or its Class 41 services.

Dissent: Judge Bergsman dissented from the finding of likelihood of confusion for the Class 25 goods.

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TTABlog comment: Retail Royalty has successfully shooed away two other bird marks via the TTAB: see here and here.

Text Copyright John L. Welch 2017.