Monday, February 13, 2006

"CHICKS RULE" Double Entendre Argument Lays Egg at TTAB

Applicant David & Goliath hatched an unsuccessful plot to overcome the PTO's Section 2(d) refusal to register the mark CHICKS RULE for various clothing items, including pajamas. The Board sided with the PTO, finding the mark confusingly similar to the mark GIRLS RULE, registered for clothing items, including pajamas. In re David & Goliath, Inc., Serial No. 78356644 (January 30, 2006) [not citable].

With the goods legally identical and with no limitations on the channels of trade or the classes or purchasers, the Board's du Pont analysis was easily unscrambled: it boiled down to a comparison of the marks. As usual, the Board pointed out that when identical goods are involved, the degree of similarity necessary to support a likelihood of confusion decreases.

The Board found the marks "highly similar," observing that they "both consist of two-word phrases that have the same connotation in each mark." Applicant pointed to a dictionary definition of the word "chick" in asserting that "the meaning of a newly hatched chicken creates a double entendre, distinguishing it from the mark in the cited registration." The Board, however, noted that Applicant's own dictionary reference alternatively defined "chick" as "slang a young woman."

"[V]iewed in the context of applicant's clothing, the slang meaning, young girl, would be apparent to the consumer. We fail to see how CHICKS used in connection with the identified goods (e.g., panties, pajamas, and thongs) would bring to mind newly hatched chickens."

Applicant next asserted that the word RULE is a weak formative because it is "laudatory, descriptive, and unprotectable": it "merely indicates that females, and in particular females wearing the clothing on which the mark appears, are superior in some sense to others." Consequently, according to Applicant, the differences in sound and appearance sufficiently distinguish the marks.

Not so, the Board responded: "Far from being laudatory, GIRLS RULE and CHICKS RULE consist of a colloquial phrase that, while it may be laudatory of females, is not laudatory of clothing." The Board concluded that, although the word CHICKS and GIRLS are different, "the marks in their entireties have some similarities in appearance and pronunciation in terms of their overall formation. Therefore, we do not believe that this difference in the two words creates marks with an overall different commercial impression."

TTABlog comment: The GIRLS RULE registration is owned by Lloyd E. Cotsen, former Chairman and CEO of Neutrogena Corporation. A passionate collector of Japanese bamboo baskets, Cotsen donated his collection to the Museum of International Folk Art in Santa Fe, New Mexico. He is also a benefactor of the Cotsen Children's Library at Princeton University, and of the Cotsen Institute of Archaeology at UCLA.

Lloyd E. Cotsen

Text Copyright John L. Welch 2006.


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