TTABlog Test: Is METAL HEADS for Headwear Confusable With METAL for Jeans and Shirts?

Metal Jeans, Inc. opposed an application to register the mark METAL HEADS for headwear, claiming likelihood of confusion with its registered mark METAL for" ski jackets, jackets, jeans and shirts.” Third-party registrations covering both headwear and one or more of opposer's goods, along with applicant's admissions, established the relatedness of the goods. Applicant also admitted that the trade channels and classes of consumers overlap. Opposer contended that the marks are nearly identical in sight, sound, and meaning because applicant’s mark commences with the word “metal.” Applicant submitted 72 live registrations for third-party marks incorporating the word METAL for clothing, in an effort to show the weakness of opposer's mark. How do you think this came out? Metal Jeans, Inc. v. Destroyer Promotional Products, LLC, Opposition No. 91252176 (November 1,2023) [not precedential] (Opinion by Judge Angela Lykos).

In light of the third-party registrations for METAL-containing marks for clothing, the Board found that "the scope of protection of Opposer’s registered mark METAL falls on the more limited end of the spectrum, meaning that the sixth DuPont factor weighs against finding a likelihood of confusion."

Applicant had admitted (by failing to respond to admission requests) that the marks are "similar," but that was not enough to allow the Board of find that the first DuPont factor weighs in favor of a likelihood of confusion. "This is because the request did not ask Applicant to admit to each component of the analysis as set forth under DuPont (appearance, sound, connotation and commercial impression). While we agree that Applicant has conceded that the marks are 'similar,' this concession is only the beginning of our analysis. Two marks can be 'similar' in some respects but quite different in others."

The Board disagreed with opposer’s contention that consumers are likely to focus on the first word METAL in Applicant’s mark. "There is no mechanical test to select the dominant element of a mark."

Applicant’s mark METAL HEADS is well-recognized unitary term with a very different meaning from the singular term METAL. Three different dictionaries define the noun 'metalhead' as 'a fan or performer of heavy metal.' The fact that this term appears in multiple dictionary entries reflects that it is firmly entrenched in the U.S. English language lexicon. The combination of the individual words “metal” and “heads” in Applicant’s mark creates a unique commercial impression that is very different from the meanings or connotations of each individual word. 'Metalhead' (and its plural noun form) is so well recognized by consumers that the two words 'metal' and 'head' cannot be regarded as separable.

The meaning of applicant's mark "stands in contrast to the dictionary definition of 'metal' as 'any of the various opaque, fusible, ductile, and typically lustrous substances that are good conductors of electricity and heat, form cations by loss of electrons, and yield basic oxides and hydroxides; especially: one that is a chemical element as distinguished from an alloy." In short, "the marks have their own unique connotations that project separate meanings and distinct commercial impressions."

The Board concluded that consumers will readily distinguish Applicant’s mark METAL from Opposer’s unitary mark METAL HEADS, and so the first DuPont factor weighed against a finding of likelihood of confusion.

The relatedness of the goods was established by more than 50 use-based third-party registrations listing either ski jackets, snowboard jackets, jeans and shirts, on the one hand, and headwear on the other. Moreover, applicant’s admissions established that some of applicant’s and opposer’s goods are complementary. Applicant’s admissions also established that the parties’ trade channels and classes of consumers overlap.

Applicant argued that because it is a wholesaler, it caters to a sophisticated, knowledgeable consumer base. However, the identifications of goods in the application and registration contain no specified price point, nor is applicant’s identification limited to wholesalers and opposer’s limited to retailers. 

We cannot assume, as Applicant urges, that these items are rendered to different classes of buyers in different marketing contexts at different prices. Rather, we must assume that the types of buyers overlap to include wholesale and retail purchasers, expert skiers and snowboarders seeking high performance jackets who carefully scrutinizes each item before purchase, the sophisticated fashionista seeking a designer look as well as the less informed bargain hunter or novice skier and snowboarder. 

Focusing on the least sophisticated potential customers, the general public, the Board found that the fourth DuPont factor weighed in favor of a finding of likely confusion. The remaining DuPont factors were deemed neutral.

Balancing the relevant DuPont factors, the Board found confusion unlikely, and so it dismissed the opposition.

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TTABlogger comment: Hat tip to applicant's counsel, Rex Brabson.

Text Copyright John L. Welch 2023.