Monday, April 23, 2007

TTAB Finds "KING RANCH" and "RANCH KING" Confusingly Similar for Hats

In a questionable decision, the Board granted a Section 2(d) petition for cancellation of a registration for the mark RANCH KING for "headwear," finding the mark likely to cause confusion with the previously-used mark KING RANCH for clothing, including hats. King Ranch IP, LLC v. GWB, Inc., Cancellation No. 92032301 (April 13, 2007) [not precedential].

Petitioner operates the King Ranch in South Texas, an enormous spread of land larger than the State of Rhode Island. The King Ranch has received considerable publicity over the years, and is listed as a National Historic Landmark. Petitioner began selling clothing in 1992, including caps and cowboy hats. The hats and caps are principally advertised locally, and are sold through catalogues, a website, and Petitioner's retail stores on or near the ranch.

As to the issue of priority, because each party owns a registration for its goods, the registrations "cancel each other out" and petitioner must establish priority its use of the mark. See Brewski Beer Co. v. Brewski Brothers, Inc., 47 USPQ2d 1281 (TTAB 1998). Respondent GWB did not submit evidence of use earlier than its application filing date of February 1, 1999; Petitioner's registration issued from an application filed on May 4, 1999. Thus it was incumbent upon Petitioner to prove a date of use prior to February 1, 1999, and it did so.

Turning, then, to the likelihood of confusion analysis, the Board first considered the goods and channels of trade. Not surprisingly, the Board found the goods to be identical. Moreover, the Board noted, Respondent's "headwear" could include relatively inexpensive hats bought without much deliberation. And the Board pointed out again that when the involved goods are identical, the degree of similarity between the marks required to support a finding of likely confusion is decreased.

Because the challenged registration and Petitioner's asserted registration are unrestricted as to trade channels, the Board must assume that the parties' goods travel in all normal channels of trade. [TTABlog question: Is the Board correct in assuming that Petitioner's goods travel in all normal channels of trade? Since Petitioner has to prove earlier use of its mark rather than rely on its registration, should its trade channels be restricted to those it actually uses: namely, its own catalogues, website, and retail stores? Could one then argue that those specific trade channels are not "normal" channels for hats, and specifically that GWB's hats would not be sold in Petitioner's trade channels?]

The crucial issue for the Board, then, was the similarity or dissimilarity of the marks. The Board opined that, although the "inversion" [reversal? - ed.] of the words KING and RANCH changes the meaning and appearance of the mark(s), "the difference is not significant." With regard to connotation and commercial impression, the Board concluded that "the marks are virtually identical."

"We are not persuaded by respondent's argument that potential purchasers will perceive the alleged surname significance of KING in petitioner's mark. We have no evidence either that potential purchasers of headwear will have detailed knowledge of the history of the King Ranch or that they would perceive a reference to Captain Richard King or any of his descendants in the KING RANCH mark when used on hats."

According to the Board, the inversion of the words "does nothing" to alter the connotation of both marks: "KING connotes something regal or superior, something of high quality, and RANCH connotes that the relevant goods are suitable for or otherwise associated with ranches or like places."

Petitioner argued that its mark is famous, but the evidence did not show fame in connection with hats. The Board concluded that "[a]ny renown for the KING RANCH derives "from the notoriety of the ranch generally," and so Petitioner is here entitled to "only a marginally broader scope of protection."

As to the lack of confusion, the Board noted that the channels of trade really do not overlap, and therefore there has been no real opportunity for confusion to occur.

Considering all relevant du Pont factors (including "the strength of petitioner's KING RANCH mark" [sic!]), the Board found confusion likely and granted the petition for cancellation.

Santa Gertrudis

TTABlog comment: Reminiscent of a steer struggling to cross the Santa Gertrudis Creek, this Board panel just managed to reach its destination: a finding of likely confusion. It wasn't pretty. I find the decision a bit troubling, since I don't think consumers are dumb enough to confuse KING RANCH and RANCH KING -- even putting aside the fame of the KING RANCH. To me "ranch king" means the best hat on the ranch. King Ranch means a ranch owned by someone named King, or a ranch named after a king, or maybe Elvis's ranch.

And as to the fame of the King Ranch, the Board couldn't seem to make up its mind. It's famous enough to give the mark KING RANCH some strength, but not famous enough that people could distinguish between the KING RANCH and RANCH KING marks.

Text Copyright John L. Welch 2007.


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