Weakness of "LAGUNA" for Clothing Leads to Dismissal of Opposition to LB LAGUNA BEACH FOOTBALL CLUB & Design

The Board dismissed a Section 2(d) opposition to registration of the mark LB LAGUNA BEACH FOOTBALL CLUB & Design for "hats; sweatshirts; t-shirts; track pants; athletic uniforms; track jackets" [LAGUNA BEACH disclaimed], concluding that the opposer failed to prove a likelihood of confusion with its registered mark LAGUNA for overlapping and related clothing items. The Board found that the term "Laguna" merited a limited scope of protection for clothing, swimwear and beachwear, and, in view of "the comparatively smaller size and subordinate nature of 'LAGUNA BEACH' in Applicant’s mark," that confusion is not likely. R. Josephs Licensing Inc. v. Laguna Beach Football Club, Opposition No. 91264741 (February 9, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

The Board first considered a procedural issue regarding opposer's rebuttal testimony. Applicant did not object to that testimony until its trial brief, but since the Board considered the objection to be one that could not have been cured during applicant's rebuttal period, it was timely made. The Board then found that the rebuttal testimony - concerning opposer's sales figures, promotional efforts, and policing - was improper because it comprised testimony that should have been offered in opposer's case-in-chief.

As to the strength of opposer's mark, evidence of third-party registration and use of various LAGUNA-formative marks for clothing led the Board to find that "within the clothing, swimwear and beachwear market, on a spectrum from very strong to very weak, the conceptual and commercial strength of Opposer’s LAGUNA marks falls toward the weaker end of the spectrum."

Considering the marks at issue, the Board found that applicant's mark is dominated by the letters LB "by sheer comparative size."

The point of similarity between the literal elements of Opposer’s marks and Applicant’s mark is the term “LAGUNA” versus the words “LAGUNA BEACH.” Given the limited scope of protection afforded to “LAGUNA” in connection with clothing, swimwear and beachwear, within the context of comparing the parties’ marks in their entireties, as well as the comparatively smaller size and subordinate nature of “LAGUNA BEACH” in Applicant’s mark, this is not a sufficient point of similarity for confusion to be likely. *** “LAGUNA” has a limited scope of protection, such that “LAGUNA” and “LAGUNA BEACH” appear and sound different, have different meanings, and differ in overall commercial impression.

The Board found the differences between the marks to be the controlling factor, and so it dismissed the opposition.

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Text Copyright John L. Welch 2023.