Tuesday, March 17, 2009

TTAB Finds "KID'S OUTDOORS" & Design Not Confusingly Similar to "OUTDOOR KIDS," Both for Clothing

Petitioner Outdoor Kids, Inc. was tossed off the TTAB teeter-totter when it sought to cancel two registrations for the mark KID'S OUTDOORS & Design (shown below) for clothing and toys [KID'S OUTDOORS disclaimed]. Petitioner relied on its registration for the mark OUTDOOR KIDS for outdoor clothing and sporting goods for children [KIDS disclaimed] in alleging likelihood of confusion and dilution. Despite the facts that the goods are legally identical, are deemed to travel in the same trade channels, and are purchased by ordinary consumers exercising ordinary care, the Board found the differences between the marks and the weakness of Petitioner's mark to be sufficient to distinguish the two marks. Outdoor Kids, Inc. v. Parris Manufacturing Co., Inc., Cancellation Nos. 92045687 and 92046943 (March 9, 2009) [not precedential].

Petitioner boldly asserted that its mark is famous, but its proofs came laughably short of proving it. Petitioner did not provide sales or advertising figures, and in fact used its mark only on swimsuits and water bottles (even though its registrations listed various other items in classes 25 and the class 28 goods did not include water bottles). [TTABlog comment: FRAUD!! But Respondent never made the claim].

Given the great deference that is accorded a famous mark under Section 2(d), one who claims fame must "clearly prove it." But there was no way in heck that Petitioner proved its mark famous. Indeed, the Board found the mark OUTDOOR KIDS to be weak, noting that the pleaded registration issued under Section 2(f) with a disclaimer of KIDS. "By doing so, Petitioner has admitted that OUTDOOR KIDS is not inherently distinctive, and that these words are merely descriptive of its goods, with the word KIDS being generic."

The Board must accept that Petitioner's registration has acquired distinctiveness (since Respondent did not seek to cancel), but "there are degrees of acquired distinctiveness." In this case, the degree must be considered as "minimal."

The only Class 25 goods on which petitioner has used its mark are swimsuits, and there is no evidence as to sales figures or advertising for these goods. And petitioner has not used its mark for any of the goods in Class 28. Thus, there is nothing in the record that would enable us to conclude that, by virtue of petitioner’s use and advertising of its mark for its own clothing and toy products, petitioner’s mark has become a strong mark. Accordingly, in the likelihood of confusion analysis we must treat petitioner’s mark as a weak mark that is not entitled to a broad scope of protection.

Comparing the two marks, Respondent argued that the elk design is the dominant portion of its mark, but the Board disagreed: the words KID'S OUTDOORS remains a "noticeable part of the mark." However, even Petitioner acknowledged that the elk design is distinctive, and "when the word portion of marks are highly suggestive or descriptive, the presence of a design may be a more significant factor."

Observing that Petitioner's mark OUTDOOR KIDS "has acquired distinctiveness only for that particular word order," and that the words "kids" and "outdoors" in each mark are "highly descriptive and/or generic" [TTABlog query: and/or?], the Board asserted that "consumers are not likely to assume that all marks that contain these elements or permutations of these elements indicate a common source."

Finally, the words in the marks have different connotations and commercial impressions: For OUTDOOR KIDS, "the connotation is that of children who enjoy outdoor activities or nature." [TTABlog query: Wouldn't "and/or" be appropriate here?] For KID'S OUTDOORS "the connotation is that of an outdoor environment that is friendly to children, or [and/or? - ed] that works on a level for children where they can do what they like or where they have control."

The Board concluded that, under these particular circumstances, consumers "would rely on what might otherwise be slight differences between petitioner's OUTDOOR KIDS mark and respondent's KID'S OUTDOORS and design mark to distinguish the marks."

Taking into account all the relevant du Pont factors, the Board found that confusion is not likely.

Outdoor Kids?
(Click on photo for very large picture)

The Board then made short shrift of Petitioner's dilution claim, pointing out that proof of fame for dilution purposes must meet an even more stringent standard than that for Section 2(d) fame. Here, Petitioner failed to meet the latter standard, so there was no way in heck that it met the higher dilution standard.

TTABlog comment: One senses that the Board was not very sympathetic toward Petitioner, who had actually used its mark only on swimsuits and water bottles while relying on a trademark registration that included many "unused goods." That's just my feeling and/or hunch.

Photograph and text Copyright John L. Welch 2001, 2009.


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