Thursday, June 11, 2009

"AMERICAN GIRL" Tops "AMERICAN BOY" in TTAB 2(d) Clothing Confrontation

American Girl came out on top of American Boy in this Section 2(d) battle of the sexists. The Board found the mark AMERICAN BOY for "clothing, namely, shirts, pants, tops, sweaters, sweatshirts and suits" likely to cause confusion with the well-known AMERICAN GIRL mark registered for various clothing items, including shirts and pants. Applicant argued that AMERICAN is a very weak formative but the Board deemed the marks, as a whole, to be confusingly similar. American Girl, LLC v. Barry Epstein, Opposition No. 91169029 (May 28, 2009) [not precedential].

The Board began with a consideration of Opposer's claim that its AMERICAN GIRL mark is famous for dolls and accessories and that this fame "extends to clothing." Opposer began using the mark in 1986 and has sold 123 million books and 14 million dolls, released three movies, and licensed the mark for greeting cards, wrapping paper, etc. It publishes a magazine and has retail stores in several large cities. Opposer has spent large sums for advertising, distributes 60 million catalogs per year, and receives about 50 million hits per year at its website. Sales have exceeded $2 billion.

Sorry, said the Board, your proofs are inadequate. Opposer failed to apportion its sales and advertising figures between dolls and doll accessories versus other products, nor did it prove Opposer's market share compared to other manufacturers. The same is true for its catalogues and advertising views. As to the movies, Opposer did not indicate "how many person viewed its films and how this compares to industry averages."

However, the Board did find the AMERICAN GIRL mark to be a "strong mark for dolls and doll accessories." And it found that this strength extends to clothing for girls:

Opposer has marketed its clothing items in the same stores and in the same catalogs in which it markets its dolls and doll accessories. *** Its gross annual sales for clothing items are impressive. *** It has numerous registrations for clothing items. *** Based on this evidence, we find that opposer has established that the public is aware of AMERICAN GIRL as a trademark for clothing and that the trademark function of AMERICAN GIRL for dolls and doll accessories has transferred to girl's clothing. [What does transfer of trademark function mean? - ed.]

Turning to the marks, the Board found that "[i]n the context of articles of clothing, which can be gender specific, AMERICAN GIRL and AMERICAN BOY give the impression that there is a common source for the clothing, with one mark for a line of clothing for males and the other mark for a line of clothing for females." Of course, when the goods are in part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Applicant maintained that the word AMERICAN is "extremely weak in the trademark sense," pointing to numerous use-based third-party registrations for clothing with AMERICAN disclaimed, and to a dictionary definition of AMERICAN.

The Board, however, asserted that its finding of similarity is based not just on the word AMERICAN but on the overall similarity of the marks.

... the combination AMERICAN GIRL and AMERICAN BOY are similar in meaning, sound, appearance and connotation. There is a similarity in the marks, not just from the shared term AMERICAN, but also from the other wording and word order in the marks. Thus, even if AMERICAN is widely registered and disclaimed, and even if the consuming public considers other wording in opposer's marks in determining the source of clothing goods, when the marks are considered as a whole, the composition of the marks suggests a commonality of source of the goods.

Consequently, the Board sustained the opposition.

TTABlog comment: Sorry, but I was not convinced by the explanation of why the strength of the AMERICAN GIRL mark for doll stuff extends to clothing. I need to have it spelled out for me.

Is it that a lot of people are aware of the AMERICAN GIRL dolls and therefore they must also be similarly aware of the AMERICAN GIRL clothing because they are marketed together?

But AMERICAN GIRL stuff is so, well, girlish, why would anyone think AMERICAN BOY was related? If there is no AMERICAN BOY doll as well, why would they draw a parallel between AMERICAN GIRL clothing and AMERICAN BOY clothing?

Isn't the combination AMERICAN GIRL so highly descriptive of clothing for American girls that it merits little breadth of protection?

Text Copyright John L. Welch 2009.


At 5:28 PM, Anonymous Anonymous said...

It might not have been raised on the record, but one of the popular features of American Girl is that girls can buy and wear the exact same outfits that their dolls wear.

At 10:44 AM, Blogger John L. Welch said...

Wouldn't they be awfully small?

At 5:12 PM, Anonymous Jay Spiegel said...

I obtained registration of GIRLS LIFE for periodical publications despite the existence of BOYS LIFE for the same goods. Several anatomical arguments carried the day after an initial refusal!

At 6:17 PM, Blogger John L. Welch said...

Isn't that the story of a boy's life v. a girl's life? Initial refusal and then, after much perseverance, allowance is secured?

At 10:45 AM, Anonymous Josh said...

This conversation has quickly deteriorated.


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