Wednesday, July 22, 2009

Prepositional Difference in Marks Not Enough to Avoid 2(d) Refusal, Says TTAB

The Board affirmed a Section 2(d) refusal to register the mark FOR EVERY WALK OF LIFE THERE IS ALWAYS ONE for various clothing items, finding it likely to cause confusion with the registered mark FOR EVERY WALK IN LIFE for some of the same clothing items. Applicant Nine Dots argued that the "OF" in its mark yields a different meaning that the "IN" in the cited mark, but the Board disagreed. In re Nine Dots LLC, Serial No. 77377797 (June 26, 2009) [not precedential].

The crucial issue was, of course, the similarity of the marks. Applicant argued that the marks have different connotations:

The cited mark is a clever play on the products which may be used "for every walk in life." Each time one walks and dons shoes the registrant’s products will be used. The Applicant’s mark on the other hand has a completely different meaning and connotation which is figurative. The phrase “walk of life” does not pertain to the physical act of walking but rather refers to an occupation, profession or social class.

The Board found two problems with Applicant's argument. First, consumers are unlikely to notice the slight difference between the prepositions used in the marks, particularly when encountering the marks at different times. Second, Examining Attorney Kristin E. Carlson provided newspaper evidence to show that "walk in life" can be used in a manner similar to the expression "walk of life." [E.g., "Who is your audience? Everyday people from all walks in life." Indianapolis Star, April 27, 2009.]

Moreover, although Applicant contended that the cited mark is a "clever play on the products," the Board pointed out that registrant's goods are actually footwear accessories, not shoes, as well as shirts, vest, pants, etc. "Therefore, the meaning and commercial impression of the expressions 'Walk of Life' and 'Walk in Life' can be the same.

The addition of the slightly laudatory phrase "There is always one" to Applicant's mark does not distinguish the marks. The marks "have almost identical beginnings," and "[m]any potential purchasers are likely to believe that registrant has now simply added an additional phrase to its mark."

Finally, the Board noted that, because many of the good involved are identical, the marks "do not need to be as close for there to be confusion."

And so, the Board affirmed the Section 2(d) refusal.

TTABlog comment: I guess you can say the Applicant here was left in Dire Straits.

Text Copyright John L. Welch 2009.


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