Friday, July 31, 2009

Test Your TTAB "Eyeball"-Ability on Two Eagle Design Marks for Clothing

The Board focused its eagle eyes on the two design marks shown below, Applicant's mark shown on the left and Opposers' on the right, both for various clothing items. Applicant S.A.S.C.O. Trading claimed the color red for its mark, while Opposers did not claim any color for theirs. How would you decide this Section 2(d) opposition? Retail Royalty Company and American Eagle Outfitters, Inc. v. S.A.S.C.O. Trading Inc., Opposition No. 91173803 (July 10, 2009) [not precedential].

The goods of the parties were in part identical and the trade channels and classes of purchasers overlapped. The goods are relatively inexpensive and are purchased without a great deal of care. All of these du Pont factors weighed in Opposers' favor. There was no evidence of actual confusion (a neutral factor here), and no evidence of use of any third-party eagle marks in the clothing field. The Board concluded that Opposers' eagle mark is strong and well-known.

So what about the marks? The Board applied the "eyeball test," explained thusly by Professor McCarthy:

Because a picture is worth a thousand words, there is little in the way of guidelines to determine the visual similarity which will cause a likelihood of confusion of buyers. Obviously, for picture and design marks (as opposed to word marks), similarity of appearance is controlling. There is no point in launching into a long analysis of the judicial pros and cons regarding visual similarity of marks. Regarding visual similarity, all one can say is "I know it when I see it."

The Board knew it when it saw it, finding the overall commercial impressions of the marks to be "highly similar."

Both marks consist of flying eagle designs depicted in silhouette form. Also, in both marks the eagles are facing to the left, with outstretched wings, and with feet thrust forward as if landing.

Although there are specific differences in the marks, these differences are "not likely to be recalled by purchasers seeing the marks at different times."

Under actual marketing conditions, consumers do not have the luxury of side-by-side comparison of the marks, and furthermore, we must consider the recollection of the average purchaser, who normally retains a general, rather than a specific, impression of trademarks. Thus, the purchaser's fallibility of memory over a period of time must also be kept in mind.

In view of the "marked resemblances" between the marks, the Board found that this du Pont favored Opposers.

Considering all the relevant du Pont factors, the Board found confusion likely and sustained the opposition.

TTABlog comment: I think Applicant's mark looks like a flying, mutant grasshopper, while Opposer's mark is clearly smaller and is not red and looks like an eagle. Maybe I need new glasses.

TTABlog query: What's the difference between a grasshopper and an eagle? A grasshopper eats flies, but an eagle flies to eat.

Text Copyright John L. Welch 2009.


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