Wednesday, September 17, 2008

Affirming 2(d) Refusal of "17" for Clothing, TTAB Rejects Attempt to Limit Goods in Cited Registration

On this, the 17th of September, the lesson is a basic one: the Board will not read into a cited registration, limitations on the goods or services based upon real world evidence. That's why this decision is a candidate for our WYHA (Would you have appealed) collection of cases. Despite Applicant's attempt to limit the cited goods, the Board affirmed a Section 2(d) refusal to register the mark 17 in the Stylized form shown here, for various clothing items, including shirts,"related to the field of professional automobile racing," finding the mark likely to cause confusion with the registered mark SEVENTEEN for "shirts." In re Roush Fenway Racing, LLC, Serial No. 75932713 (September 3, 2008) [not precedential].

Applicant lamely argued that its goods are marketed to "middle-aged male race fans," while Registrants shirts are aimed at "teenage girls interested in fashion." However, the Board pointed out once again that the determination of likelihood of confusion must be based on the goods recited in the cited registration, rather than what the evidence shows the goods to be.

Although Applicant's goods are restricted to clothing "related to the field of professional auto racing," this does not take Applicant's goods "out of the purview of those in the cited registration because registrant's 'shirts' encompass such goods."

In view of the identity of "shirts" in the application and registration, it was unnecessary for the Board to consider the remaining clothing items in the application. The channels of trade for Registrant's shirts is presumed to encompass all normal channels of trade for shirts, including those for Applicant's goods.

Applicant feebly asserted that the purchasers of its goods "are sophisticated, knowledgeable consumers who purchase these items with care." However, its assertion was unsupported in the record. Moreover, the purchasers of such clothing items may or may not exercise care, and in any case even sophisticated purchasers are not immune to confusions when the marks are "as similar as these marks ... and the goods with which they are used are legally the same."

As to the marks, "Applicant's contentions that these two marks have different connotations pertaining either to automobile racing or fashion are not well taken." Again, "[e]xtrinsic evidence that may tend to limit the scope of registrant's goods is essentially a collateral attack on the cited registration, which is not appropriate in this context, nor is the evidence probative of the registrability of applicant's mark."

The Board found that the marks "have substantially similar commercial impressions" and that the stylization of Applicant's mark is not a distinguishing factor. First, Applicant's mark is in a "non-distinctive font style," and second, Registrant's mark is in standard character format and conceivably could be displayed in the same letter style as Applicant's mark.

In short, Applicant's attempt to read marketplace limitations into Registrant's identification of goods was thwarted by black-letter TTAB precedent.

Text Copyright John L. Welch 2008.


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