Friday, December 05, 2008

Renown of "THE BLACK DOG" Marks Brings TTAB 2(d) Victory Over "YELLOW DOG NANTUCKET" for Clothing

In a copiously-illustrated, 54-page decision, the Board sustained Section 2(d) oppositions to registration of the mark YELLOW DOG NANTUCKET in standard character and design form (shown below right) for T-shirts [NANTUCKET disclaimed], finding the marks likely to cause confusion with Opposer's numerous registered and common law marks, including the standing dog design shown below left, the phrase THE BLACK DOG, and combinations and variations thereof, for clothing and other goods and services. The Black Dog Tavern Company, Inc. v. Joseph J. Juras, Oppositions Nos. 91152364 and 91153557 (December 2, 2008) [not precedential]. [TTABlog note: Because yours truly served as co-counsel to Opposer, along with General Counsel Emily LaPointe, this posting will hit just the high points, without editorial commentary.]

The Board began by finding that, based on "significant sales, extensive advertising and continuous use of Opposer's marks for almost thirty years for dining services and over two decades on a wide range of merchandise" and on the "ongoing, favorable publicity opposer's services and products have received," Opposer's marks "have achieved a degree of fame, and serve as strong indicators of source for Opposer's products and services." This factor "strongly favors a likelihood of confusion."

The Board next found the goods to be identical in part and otherwise closely related, and the channels of trade (brick-and-mortar and online stores) identical. The parties' common goods, T-shirts, are impulse items purchased with "ordinary care, at best."

Turning to the marks, the Board found "the accumulated points of similarities in appearance and commercial impression" to be "quite remarkable, including the general size and style of fonts employed in the wording positioned between the respective standing dog images."

Hence, based upon the entire record herein – with the various combinations of dog silhouettes, the word "DOG," font choices, listing popular localities in the Cape and the islands, precisely the same placement on T-shirts and other identical items of clothing, and especially in light of the renown of opposer’s marks in connection with T-shirts on the Cape and the islands – we find that the degree of similarity in commercial impressions with applicant's composite mark is strongest when comparing opposer's common law composite mark as used above, as opposed to singling out the similarities of any two registered marks.

In sum, "the confusing similarity of the marks is a factor that strongly favors a finding of likelihood of confusion in this case."

Applicant Juras argued that Opposer's marks were weakened by the existence of a dozen third-party registrations for marks containing the words "BLACK DOG," some with a depiction of a black dog. But Juras was barking up the wrong tree: the Board found that these registrations did not undermine Opposer's marks because the goods and services involved were not closely related to those of Opposer, and/or the designs involved were "quite different" from those at issue here. Third-party Internet uses of "Black Dog" were not probative since there was no evidence of the nature and extent of use of those marks.

Next, Juras pointed to the lack of proof of actual confusion, but the Board noted that likelihood of confusion, not actual confusion, is the proper test. Moreover, Juras's evidence of use of his marks was so scanty that the absence of evidence of actual confusion was "meaningless."

Opposer vehemently urged that Juras adopted his marks in bad faith. The Board deemed it unnecessary to find bad faith "in order to conclude that there is clearly a likelihood of confusion herein."

Nonetheless, in light of the renown of opposer’s marks, applicant’s professed interests in images of dogs, his years of formal education and professed business acumen, and his having lived in Nantucket for one or more high-tourist seasons, we find that his claimed ignorance of opposer’s well-known enterprise and branding success prior to adopting his marks and filing the involved applications strains credulity. As a newcomer, under this set of circumstances, applicant had a duty to select a mark that would not give rise to a likelihood of confusion. e.g., Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191, 200-01 (TTAB 1979).

Considering the relevant evidence, the Board ruled that confusion is likely, and it sustained the oppositions.

(1) Cape Cod,(2) Martha's Vineyard, (3)Nantucket.

Text Copyright John L. Welch 2008.


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