Monday, November 28, 2005

TTAB Doesn't Buy PTO's "Designer Marks" Argument, Reverses 2(d) Refusal of "WEILL & Design" for Clothing

Finding the PTO's "designer marks" argument inapt, the Board reversed a Section 2(d) refusal to register the mark WEILL & Design (immediately below) for various clothing items ("PARIS" disclaimed), deeming it not likely to cause confusion with the registered marks PARFUMS WEIL PARIS & Design for perfumes ("PARIS" disclaimed), and the registered marks RAYMOND WEIL, RW RAYMOND WEIL GENEVE & Design, and TANGO BY RAYMOND WEIL for watches and jewelry. In re Vetements Weill, Serial No. 78321221 (November 18, 2005) [not citable].

As to the marks, the Examining Attorney asserted that the dominant feature of each of the cited marks is WEIL, which is the phonetic equivalent of WEILL, the dominant portion of Applicant's mark. As to the goods, she submitted third-party registrations to support her assertion that the involved goods are related because "clothing designers sell, among other things, clothing, perfumes, watches and jewelry under their designer names."

The Board agreed that Applicant's mark and the PARFUMS WEIL mark "are sufficiently similar that, if related goods were sold thereunder, consumers likely would be confused." It therefore observed that "[t]he merits of this refusal turn on the similarity/dissimilarity between the goods."

According to the Examining Attorney, "[a]pplicant is a clothing designer and clothing designers tend to place their marks on watches, jewelry and perfume." Thus "[w]hen used in connection with such similar designer marks, these goods are sufficiently similar to cause confusion in the marketplace."

The Board pointed out the "problem" with the examining attorney's argument:

"there is no evidence indicating that either applicant or registrant is a designer, or that consumers would perceive the term as referring to designers. Thus, we do not view this case as falling within the purview of the designer mark cases wherein more varied goods were found to be related because of the practice of designers to license their names for a wide variety of goods."

The Examining Attorney also relied on third-party registrations in attempting to show the relatedness of the goods. However, upon "close review," those registrations did not support the PTO's position. They showed "only three marks that have been registered by entities (one entity owns two of the marks) for the types of goods involved herein." Moreover, all the registrations "appear to involve designer marks and, as indicated earlier, we have no evidence that applicant's or registrant's mark herein is a designer mark."

Therefore, the Board reversed the Section 2(d) refusal based predicated on the PARFUMS WEIL mark.

Turning to the three RAYMOND WEIL registrations, the Board reversed those refusals as well: "the record does not include evidence that any entity, other than a fashion designer, sells clothing and watches and jewelry under the same mark."

TTABlog comment: Suppose the Examining Attorney had not raised the "designer marks" argument and had simply offered the third-party registrations, citing Albert Trostel and Mucky Duck. If Applicant then argued that the cited registrations were distinguishable because they are owned by "designers," would the Board have bought that argument? How would Applicant prove that the registrants were "designers" and that it was not a designer?

Text Copyright John L. Welch 2005.


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