Tuesday, March 07, 2006

"GREEN by Missako" for Clothing Confusingly Similar to "GREEN" for Footwear, Says TTAB

Color Missako Franchising blue after its attempt to register the mark shown below for various clothing items was thwarted by two existing registrations for the mark GREEN for footwear (owned by the same entity). [The words "by Missako" appear in very small lettering below the word "GREEN." "GREEN" is disclaimed.] The Board found Missako's mark likely to cause confusion with the registered marks, and it therefore affirmed the PTO's Section 2(d) refusal to register. In re Missako Franchising, S.A., Serial No. 78254972 (February 21, 2006) [not citable].

Examining Attorney Leonard Tachner maintained that the applied-for mark is dominated by the word GREEN, and that third-party registration evidence demonstrated that clothing and footwear are related goods.

Missako argued that the term "green" is in common use in the clothing field and therefore is an insufficient basis for a likelihood of confusion finding, that the design portion of its mark dominates the word GREEN, and that the presence of BY MISSAKO makes confusion even less likely. Missako submitted 71 third-party registrations for marks that include the word GREEN for clothing or footwear.

The Board agreed with the Examining Attorney. Noting that there is no per se rule in cases involving clothing and footwear, it pointed to prior TTAB decisions finding likelihood of confusion in such cases, and to the PTO's third-party evidence, in finding the goods related.

As to the marks, the Board found them sufficiently similar that confusion would be likely. Although the design portion of Missako's mark plays a "prominent role in the commercial impression engendered" by the mark, the word GREEN is the dominant element of the mark and therefore is accorded greater weight in the likelihood of confusion analysis.

"Although applicant is correct in pointing out that the Federal Circuit has cautioned that there is no general rule as to whether words or a design dominate in a particular mark, it is highly unlikely that consumers will call applicant's goods by "the sun burst design" or "the daisy flower design"; rather, given the easily pronounced and one-syllable word "Green," it is far more likely that this term will be used by customers in buying applicant's clothing."

Missako asserted that its mark "creates the impression of a child's garden, a sense reinforced by the child-like lettering design of the word 'green.'" The Board noted that the record contained no evidence to support this argument. To the extent that "GREEN" may suggest the outdoors or a clean environment, the same suggestion may be conveyed by Registrant's mark.

In sum, the Board concluded that "the marks, when considered in their entireties, create similar commercial impressions, and the differences between the marks are insufficient to distinguish them when used in connection with related goods."

Missako's argument, based on third-party registrations (including the following marks: GREEN BRAND, GREEN LABEL, GREEN GEAR, and THE GREEN COLLECTION), that "the term 'green' is exceedingly weak as applied to items of wearing apparel including footwear" went nowhere. The Board noted that there are no other registrations of GREEN per se, and further that this third-party evidence is of extremely limited value because it does not establish that the marks are in use or that the public is familiar with them.

Finally, the presence of the phrase BY MISSAKO in Applicant's mark is insufficient to distinguish the marks, particularly in light of the "very small" size of those words relative to the rest of the mark. "Further, it is more likely that consumers will refer to the goods as GREEN, as opposed to the entire phrase GREEN BY MISSAKO."

Noting that any doubt about likelihood of confusion must be resolved in favor of the prior registrant, the Board affirmed the Section 2(d) refusal.

TTABlog comment: Had Applicant's mark been the word mark GREEN BY MISSAKO in standard characters, the outcome might have been different. But it is a bit annoying that the word GREEN is registered for clothing and footwear. How did that happen?

One is reminded of In re Rizzo, Serial No. 75461632 (February 20, 2004) [not citable], in which the Board affirmed a refusal to register the alleged mark SEPIA on the Supplemental Register because the term was incapable of functioning as a trademark. “Simply put, while ‘sepia’ is not a generic term, in the sense that it is not the name of any particular cosmetic product . . . it is used to identify a color of the goods, irrespective of their source, and hence must remain in the public domain, so that any seller or manufacturer of cosmetics retains the ability to tell prospective purchasers that its goods are available in the color sepia.” The same reasoning would seem to apply to the word "green" vis-a-vis footwear.

Text Copyright John L. Welch 2006.


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