Tuesday, May 29, 2007

"YSL" and "SL" Logos for Jewelry Confusingly Similar, TTAB Rules

Finding that "even careful purchasers are likely to be confused," the Board affirmed a Section 2(d) refusal to register the mark SL & design (below left) for "men's and women's fine jewelry," finding it confusingly similar to the marks YSL in the design form shown below right, registered and used for, inter alia, jewelry, clocks, and watches by Yves Saint Laurent, the French designer and fashion house. Yves Saint Laurent Fashion B.V. v. Goldfinger Hawaii, Inc., Opposition No. 91118017 (May 15, 2007) [not precedential].

The Board first noted that the parties' goods are in part legally identical, and thus, because there are no restrictions in the application and registration, the goods must be deemed to travel in the same channels of trade to the same customers.

Although some of Applicant's jewelry is sold for as little as $20 and may be purchased without great care, even those who purchase more expensive or very expensive items of jewelry (and hence may be considered "discriminating") are not immune to source confusion "when the identical goods are sold under similar marks."

The record evidence established that Opposer has used its YSL mark for more than 40 years, with substantial sales and advertising expenditures, extensive media recognition and coverage, and significant exposure to the public. As a result, the Board found the YSL mark to be "strong and famous in the fashion field and entitled to a broad scope of protection."

Comparing Applicant's SL logo to Opposer's YSL design, the Board noted that the marks are "easily recognizable as the letters YSL and SL," and are capable of being spoken. When spoken, they are similar in sound.

Moreover, "[t]he visual similarity of the marks is striking." The letters are in the same size and proportion, and are arranged in an essentially identical vertical interlocking form.

Each mark is a combination of arbitrary letters without any inherent meaning, which makes them more difficult to remember than a word or phrase, and more likely to be confused. Moreover, purchasers may be aware that the letters YSL are the initials of Yves Saint Laurent, and SL would have "a similar meaning, if not the same." Applicant's SL mark may be perceived as a version of Opposer's stylized YSL mark, possibly identifying a particular line of Opposer's jewelry.

Applicant argued that SL stands for its president and owner, Steven Lee, but the Board noted the lack of evidence that consumers would be aware of Mr. Lee or otherwise associate the mark SL with his name.

Consequently, the Board sustained the opposition.

Text Copyright John L. Welch 2007.


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