TTABlog Test: Are these two "I * NY" Confusable for Backpacks and Clothing?

The USPTO refused to register the mark shown below left, for "Back packs; fanny packs; tote bags" and for "“Clothing, namely, aprons, t-shirts, sweatshirts, and hats," finding confusion likely with the registered mark shown below right, for, inter alia, backpacks and t-shirts. The goods are in-part identical and those goods presumably travel in the same trade channels to the same classes of consumers. But what about the marks? How do you think this appeal came out? In re Damselfly Global LLC, Serial No. 97669661 (September 23, 2024) [not precedential] (Opinion by Judge Mark Lebow).

The Board began with a consideration of the strength of the cited mark, noting that in an ex parte appeal the strength of the cited mark “is normally treated as neutral because the record generally includes no evidence as to fame.” However, applicant itself provided some evidence that registrant’s mark is commercially strong.

Applicant argues . . . that “consumers are likely to pronounce [Registrant’s] I LOVE NY Marks [as I LOVE NEW YORK] because that’s how the extremely popular and widespread marketing campaign pronounces, and has always pronounced, the I LOVE NY Marks.” Applicant thus affirmatively acknowledges an “extremely popular and widespread marketing campaign” supporting the cited mark.

As to the inherent strength of the cited mark, applicant provided third-party registration evidence that  suggested that "the “I ♥” format is often registered, but with additional elements that were considered to have distinguished them overall." However, there was no evidence regarding use of those marks. 

In sum, we find that the frequent registration of marks containing an “I ♥” format shows that these sorts of affinity marks are somewhat weak conceptually, and that Registrant’s particular mark reflecting affinity with New York thus has some commercial weakness. *** We also account for Applicant’s acknowledgement that Registrant’s mark has some commercial strength.

Turning to the marks, the Board found no dominant element in either mark. "They are both unitary in nature, conveying a single and distinct commercial impression that is distinct from the constituent words “I” and “NY” that they contain."

The Board acknowledged that there may be some difference in sound, but "given the structure and contents of the mark, and the fact that flowers are often associated with love, pronouncing the mark as 'I LOVE NEW YORK' is at least as reasonable as pronouncing it as 'I FLOWER NEW YORK' or 'I ROSE NEW YORK.'" [FWIW: I think I would pronounce it as I LOVE FLOWERS IN NEW YORK - ed.]

The Board found the connotations and commercial impressions of the marks to be similar in that they are "presented in the same structure and use a design element to convey a message about affinity with New York. Just as Registrant depicts the heart in different colors to add to the message, the flower could be seen as an extension of the message, or simply a variant of Registrant’s mark."

The Board concluded that, "notwithstanding the small visual differences resulting from the substitution of a flower design for a heart design, the overall appearance, sound, connotation and commercial impression of the marks are far more similar than dissimilar."

And so, the Board affirmed the refusal.

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TTABlogger comment: What if the you replaced the flower design with the N.Y. Mets logo?

Text Copyright John L. Welch 2024.