Friday, April 21, 2006

TTAB Dismisses 2(d) Opposition: "UNCLE DUTCH" Not Confusingly Similar to "VON DUTCH"

Applicant Richard M. Betts, nephew of the late Kenneth Howard, who was also known as "Von Dutch," survived a Section 2(d) challenge to his application to register the mark UNCLE DUTCH for jewelry. Opposer Von Dutch Originals, LLC relied on three registrations for the mark VON DUTCH (in block-letter and stylized form) for clothing, stationery, and eyewear, but its evidentiary offerings fell short of proving likelihood of confusion. Von Dutch Originals, LLC v. Betts, Opposition No. 91159477 (April 6, 2006) [not citable].

Opposer managed to get its three registrations into evidence, but it failed to prove its allegation of common law use of the VON DUTCH mark on jewelry. Opposer offered two declarations in its case-in-chief, but Applicant Betts successfully objected to their admissibility because there had been no stipulation to the submission of testimony by way of declaration. (See Rule 2.123(b)). The Board also rejected, sua sponte, Opposer's attempt to introduce its sales catalogue into evidence because the catalogue was not a "printed publication" under Rule 2.122(e) and therefore could not be introduced via a mere notice of reliance.

Turning to the substantive issues, the Board noted Applicant's claim that he adopted the UNCLE DUTCH mark because his uncle was a "big influence on him." Betts "clearly knew that his uncle's business alias was 'Von Dutch," although it was not clear how much Betts knew about Opposer's VON DUTCH trademark registrations.

The Board then rolled through the duPont factors. As to the marks, the Board found that the "prominent first words in these marks create critical differences." As to sound, "the difference is sharply accentuated." As to sight, "the first word at once distinguishes the marks." Moreover, the Board agreed with Applicant that "UNCLE DUTCH sound like an informal name for a family member while VON DUTCH sounds like a Germanic surname." Therefore, the commercial impression created by the marks "would be one of contrast rather than of similarity." In sum, the Board found the marks so different that "even if the goods ... were more closely related," Von Dutch still would not win.

As to the strength of the VON DUTCH mark, Opposer claimed that the mark is "well known" by reason of media coverage and substantial sales," but no such evidence was properly made of record. Indeed, the Board found "no evidence suggesting either that registrant's mark is a weak mark as applied to registrant's goods, or contrariwise, that it is especially strong." Thus this factor was neutral.

With regard to the goods, Von Dutch "submitted no evidence in this record to demonstrate the relationship of jewelry to clothing, stationery or eyewear." [Opposer filed an application to register VON DUTCH for jewelry, which matured into a registration in January 2006, but the documents were never made of record.] Thus this factor favored Applicant Betts.

Von Dutch

Finally, the Board looked to the 13th duPont factor, which focuses on "any other established fact probative of the effect of use." Opposer argued that Betts was "clearly trying to trade off the good will associated with the VON DUTCH mark and that he filed the involved application in bad faith." Opposer pointed out that Betts sells jewelry that incorporates his uncle's distinctive "flying eye" design, that he makes many reference to the work and legacy of Von Dutch, that the motifs on Bett's goods explicity draw on his uncle's "style and history," that at times the UNCLE DUTCH mark is presented in a font that mimics the VON DUTCH font, and that Betts filed and then abandoned an application for the mark UNCLE VON DUTCH. The Board was slightly moved, but not much:

"While our decision here should not be read as approving of Mr. Betts' business practices, our determination focuses only on the registrability of the mark UNCLE DUTCH for jewelry in light of claims of likelihood of confusion with three of opposer's federal registrations. Another tribunal - having broader jurisdiction over acts of unfair competition and faced with a different record - might well hold differently based upon some of applicant's specific actions enumerated above." (slip op., pp. 16-17).

However, the Board was unable to find that Betts' adoption of the UNCLE DUTCH mark was in bad faith, or that he intentionally sought to trade on Von Dutch's good will. Betts' behavior "has not been shown to be sufficiently egregious to swing the balance under the duPont factors in opposer's favor."

The Board therefore dismissed the opposition.

TTABlog note: Von Dutch doesn't sound like a Germanic surname to me. Instead it reminds me of St. Louis Cardinal phenom Von McDaniel, who in 1957 pitched a two-hitter in his major league debut, and followed up with a one-hitter in his second start. By the next year he had hurt his arm, and his career was over.

Text Copyright John L. Welch 2006.


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