TTABlog Test: Is "S!MPLY" for EVA FOOTWEAR Confusable With "SIMPLY" for Dresses, Jumpsuits, and Rompers?
The USPTO refused to register the proposed mark S!MPLY for "Footwear, primarily made of ethylene-vinyl acetate; Slip-on shoes, primarily made of ethylene-vinyl acetate," finding confusion likely with the registered mark SIMPLY for "Dresses; Jumpsuits; Rompers." Applicant Simply Southern argued that its mark, when said aloud,"is literally: ‘s, exclamation point, m, ply (or p-l-y)." As to the goods, it asserted that there was no evidence that dresses, jumpsuits, or rompers are made with ethylene-vinyl acetate. How do you think this appeal came out? In re Simply Southern Holdings, LLC, Serial No. 90728560 (August 3, 2023) [not precedential] [not precedential] (Opinion by Judge Thomas Shaw).
The Board was not impressed with Simply Southern's pronuciation argument. "Rather, we find it likely that consumers would pronounce Applicant’s mark as 'simply,' the same as Registrant’s mark." Simply Southern’s own specimen includes the S!MPLY mark with tag line stating: "be you and live simply." Moreover, the Board noted, "an exclamation point is similar to an inverted lowercase letter 'i.'"
The Board also found that substitution of an exclamation point for the letter “I” "does little to change the commercial impression of Applicant’s mark so as to distinguish it from the registered mark."
As to the goods, Examining Attorney April Roach submitted webpage excerpts showing that footwear and dresses, jumpsuits, and rompers are commonly made and sold under a single mark: for example, Kate Spade, Boden, Roxy, Olukai, Ugg, Fila, Hoka, Merrell, and Puma. "Notably, the footwear on these websites are made from a variety of materials, including, leather, fabric, rubber, and EVA foam." And so, the Board found the involved goods to be related.
Simply Southern's argument that the registration does not cover EVA goods was simply off the mark. "It is not necessary that Applicant’s goods be encompassed by Registrant’s goods or made from the same material. The goods need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [they] emanate from the same source."
The Office's website evidence demonstrated that the goods are sold through the same types of online retail stores to some of the same consumers.
And so, the Board found confusion likely and it affirmed the refusal.
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TTABlogger comment: WYHA?
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 8/11/2023
5 comments
5 Comments:
If the applicant went as far as they did in drafting a narrow ID, they should have gone even further, testing the limits of the rule that third party evidence must show the EXACT goods of applicant and the cited mark. Why not describe the pastel "tie-dye" look and even more details that make this shoe look like nothing a seller of dresses would sell. The Board here relied on the evidence showing the shoes made with a variety of materials but was that enough to meet the "exact goods" rule? I think the decision was absolutely correct but I just want to see how the Board will (if ever) draw that line where more specificity in applicant's ID is simply ignored as irrelevant (or however they adjust the rule)
Finally, a decision that is not 40+ pages long.
Gene, what "exact goods" rule? Omaha Steaks says "similar."
I feel bad for the Applicant if they were convinced this had a great chance, or even a chance, on Appeal.
John, I should have used the word "specific":
The TTAB has held that third party evidence that does not include the specific goods or services at issue are inadmissible for the purpose of showing the relatedness of such goods or services. See In re Band-It-IDEX, Inc., Serial No. 77363240 (T.T.A.B. October 20, 2009) (finding third-party registrations that contained similar, but not identical, goods to have “less probative value, under Trostel and Mucky Duck, as evidence that applicant’s goods and the goods in the cited registration are related.”); In re Formax, Inc., Serial Nos. 77298497 and 77298501 (T.T.A.B. October 14, 2009) (non-precedential) (“we find the Examining Attorney’s reliance on the third-party registrations misplaced. Not one of the registrations covers the two specific types of goods identified in the application and the cited registration.”); In re Force Tech., Serial No. 79040079 (T.T.A.B. June 19, 2009) (dismissing examining attorney’s ten third-party registrations); In re Deceuninck N. Am. LLC, Serial No. 77465459 (T.T.A.B. May 27, 2009) (“Based on the sparse record (i.e., seven third-party registrations that do not include registrant’s specifica [sic] goods), we do not find that the Examining Attorney met her burden . . .”); Tensar Corp., LLC v. McElroy Metal Mill, Inc., Opposition No. 91174290 (T.T.A.B. March 17, 2009) (recurring problem with opposer’s third-party registrations was that they did not “include both the specific types of goods and services identified in opposer’s registrations and the specific types of goods identified in the opposed application.”); In re Carrier Corp., Serial No. 78329277 (T.T.A.B. February 15, 2008) (“Upon closer examination of the evidence submitted by the examining attorney, we find that only one use- based third-party registration includes fan coils and ceiling fans . . . . This single registration is insufficient to show that applicant’s fan coils and registrant’s ceiling fans are of a type which may emanate from a single source”); In re Itec Mfg., Ltd., Serial No. 78621722 (T.T.A.B. February 13, 2008) (“We find this evidence to be particularly unpersuasive in this case. None of the third-party registrations lists both specific types of goods covered by the application and any of the cited registrations”); In re Breach Sec., Inc., Serial No. 78668939 (T.T.A.B. June 18, 2007) (“the third-party registrations submitted by the examining attorney fail to yield a single registration in which the same mark is used to identify a ‘network security appliance’ or, for that matter, any sort of goods that prevent security breaches, and registrant’s goods. While the third-party registrations make reference to goods that are similar to those identified in the cited registration, they do not refer either to the goods recited in the challenged application or to similar goods used for the purpose of providing computer network security”); In re Vafiadis, Serial No. 78509712 (T.T.A.B. January 24, 2007) (applicant amended its goods to mineral water distributed in the dental field – “None of the third-party registrations includes ‘mineral water distributed in the dental field.’ Therefore, we do not find the examining attorney’s evidence persuasive on this point”).
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