Tuesday, June 09, 2009

Appeal from a Section 2(d) Refusal: You Be the TTAB Judge!

Alrighty, then. Here's another chance to prove your TTAB judgeworthiness. Applicant Blue Heaven Hosiery seeks to register the mark BBW in standard character form for "women’s knee high stockings of nylon and spandex construction material and not including upper torso clothing." Examining David C. Reihner refused registration under Section 2(d), deeming the mark likely to cause confusion with the registered mark BBW & Design (shown here, lined for blue and gold) for "clothing for over-sized women – namely, jeans, blouses, lingerie, skirts, and slacks." What do you think? In re Blue Heaven Hosiery Co., Inc., Serial No. 76687280 (May 26, 2009) [not precedential].

The Examining Attorney submitted more than a dozen registrations identifying goods from both the application and the cited registration. Applicant, through its attorney Myron Amer, argued that the goods do not overlap because Applicant has added the limitation of "not including upper torso clothing." How do you like that argument?

Are you ready to rule?

The Board affirmed the refusal in a terse, seven-page decision.

As to the marks, the word portions are, of course, identical. And when a mark consists of words and design, "the words are generally dominant because the words will be used to call for or refer to the goods." The mere addition of color to registrant's mark does not change the connotation. And so, "the marks are nearly identical in appearance, sound, meaning and commercial impression."

As to the goods, "[c]opies of use-based, third-party registrations may serve to suggest that the goods are of a type which may emanate from a single source. See In re Albert Trostel & Sons. Co., 29 USPQ2d 1783 (TTAB 1993).

As to Applicant's argument regarding its goods "not including upper torso garments," the Board was not impressed.

The goods in the cited registration are not limited to upper torso clothing. In fact some, such as "skirts" and "slacks" are clearly intended to be worn on the lower torso. Furthermore, the third-party registrations cover, variously, every one of the goods identified in the cited registration -- "jeans," "blouses," "lingerie," "skirts" and "slacks" -- alongside applicant's "knee-high stockings." Finally, although the clothing items identified in the cited registration are limited to "over-sized women," the clothing identified in the application are not limited by size, and may include the same consumers.

Because neither the application nor the registration contains any limitations on channels of trade, the Board presumed that the involved goods travel in the same channels to the same classes of customers.

And so the Board affirmed the refusal to register.

TTABlog comment: Do I hear a WYHA motion? Do I hear a second? The motion passes and this case is officially added to our WYHA collection.

Text Copyright John L. Welch 2009.


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