Monday, August 06, 2007

TTAB Reverses 2(d) Refusal of "KID TENNIS" Design for Clothing: Too Different from "TENNISKIDS"

The first du Pont factor, the dissimilarity of the marks, led the Board to reverse a Section 2(d) refusal of the KID TENNIS & Design mark (shown below) for various clothing items ("KID TENNIS" disclaimed). The Board found the mark not likely to cause confusion with the word mark TENNISKIDS for partly identical goods. In re Silberberg and Silberberg, Serial No. 78712155 (July 24, 2007) [not precedential].

The Board disagreed with the Examining Attorney's contention that "it is the wording in applicant's mark that necessarily is the dominant feature of the mark's commercial impression." Here, the wording and the design are integrated, and so neither predominates in the overall commercial impression of the mark.

Nor did the Board find it dispositive that the cited mark is registered in standard character form. It is true that the cited mark must be considered "in all reasonable manners in which it might be depicted," but Applicant's mark "is so highly stylized that it does not fall within the range of 'reasonable' manners of display that should be reserved to the registered standard character mark."

In short, the Board found the marks to be visually dissimilar.

In terms of sound, the Board deemed the marks more similar than dissimilar, but it found the connotations different. Applicant's mark connotes a character named "Kid Tennis," which is reinforced by the design element of the mark. The registered mark, on the other hand, would be understood to refer to "tennis kids" in general, i.e., "kids who play tennis."

Finally, as to overall commercial impression, the marks differ because Applicant's mark creates the impression of a cartoon character named "Kid Tennis." The words "kids" and "tennis" are highly suggestive of the involved goods, and so the "mere presence of these words does not outweigh the dissimilarities between the marks ...."

Therefore, despite the legal identity of the goods, trade channels, and purchasers, and the fact that consumers will exercise only ordinary care, the Board found that the dissimilarity of the marks outweighs the other factors.

Text Copyright John L. Welch 2007


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