Wednesday, January 18, 2006

TTAB Finds "KEEP RUNNING" and "KEEP WALKING" Confusingly Similar for Footwear

Asics Corporation failed to get any traction in its attempt to reverse the PTO's Section 2(d) refusal of the mark KEEP RUNNING for "athletic shoes." The Board found the mark likely to cause confusion with the mark KEEP WALKING, registered in word and design form for various clothing items, including shoes and sneakers. In re Asics Corp., Serial No. 76190823 (January 4, 2006) [not citable].

Faced with the fact that the goods identified in the application and one of the registrations overlap, and that athletic shoes are closely related to other clothing items in the registrations, Asics argued that there are "substantial differences between the types of goods identified in the application and cited registrations as well as differences in the trade channels for the goods." It asserted that registrant is a "world famous supplier of whiskey under the brand name JOHNNIE WALKER," that the goods of the registrations are sold in promotion of the whiskey, and that consumers would recognize that these goods are "collateral to registrant's primary goods." Moreover, these collateral products "would likely be provided exclusively through trade channels where whiskey is sold or promoted," whereas Asics is a "world famous manufacturer" of footwear and its goods are sold where athletic shoes are sold.

Unfortunately for Asics, its arguments were irrelevant because likelihood of confusion is determined in view of the identification of goods set forth in the application and registrations, "rather than on the basis of what the record may reveal as to the nature of the goods, or the actual channels of trade or purchasers for the goods." See, e.g., Octocom Systems, Inc. v. Houston Computer Services Inc., 16 USPQ2d 1783 (Fed. Cir. 1991). Registrant's clothing items are not limited to a "promotional function for its alcoholic beverages," nor are there any limitations on the channels of trade.

Asics' argument regarding the cost of its shoes and the sophistication of purchasers was unsupported by any evidence. The Board observed that Asics' shoes could be purchased by ordinary consumers, and there was no evidence that such consumers would exercise anything other than ordinary care.

Turning to the marks, Asics contended that they "connote drastically different ideas:" the mark KEEP WALKING is used as a marketing theme to promote Registrant's whiskey, whereas "applicant's mark has the connotation of physical exercise." The Board, however, was not impressed; it found that the "overall similarities in the marks strongly outweigh their differences."

"Further, the marks convey substantially similar meanings and overall commercial impressions. As the examining attorney points out based on dictionary definitions of the two terms, running is simply a faster version of walking. Thus the two slogans convey a very similar message or instruction in relation to athletic shoes and exercise wear such as jogging suits."

Finally, the Board observed that Asics contentions regarding the "asserted fame or recognition of ASICS or JOHNNIE WALKER marks" are irrelevant, since ASICS is not part of Applicant's mark and JOHNNIE WALKER is not part of the registered marks. "[T]he commercial impression of a mark is not determined by extrinsic evidence as to its affiliation with a particular entity."

In light of the similarity of the marks and the relatedness or identity of the goods, the Board affirmed the Section 2(d) refusal to register.

Text Copyright John L. Welch 2006.


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