Friday, October 09, 2009

Test Your TTAB Eye-Ball Ability on Two Triangle Design Marks for Clothing

Take a look at the two design marks shown immediately below, for overlapping lists of clothing items. Would you find confusion likely? Keep in mind that when the goods are identical (even in part), a lesser degree of similarity in the marks is necessary to support a determination of likelihood of confusion. And also remember that the marks will seldom be viewed side-by-side by consumers, whose recollection of design marks is "often of a general and hazy nature." The Board's decision is here: L.A. Gear, Inc. v. Calcados Ferracini Ltda., Opposition No. 91168866 (September 23, 2009) [not precedential].

Applicant pointed out in "painstaking detail" the differences between its "triangle mark" and Opposer's "stylized exclamation point," and it argued that Opposer "minimizes the importance of the 'five-sided base' when comparing the marks."

The Board, however, found the marks to be "very similar in appearance," engendering "very similar overall commercial impressions." It agreed with Opposer's "eyeball" comparison of the marks:

Both marks consist of a line that inclines upward from left to right and tapers in thickness as it inclines upward. In each case the slope of the line is at an angle approximately 40º from the horizontal. In both marks, the line is not entirely straight, but incorporates a slight curve. Each mark has the overall appearance of an elongated triangle.

According to the Board, both marks "essentially present diagonal strokes; the slight break present in opposer's mark may not even be noticed by consumers."

And so the Board concluded that "[t]he similarity between the design marks weighs in favor of likelihood of confusion."

Opposer L.A. Gear attempt to prove its mark famous, but its proofs fell short. Applicant pointed to 15 third-party registrations for "line or triangle devices" for footwear and apparel. The Board, however, noted that Applicant provided no evidence regarding use of those marks, and in any case each of those marks is "less similar to opposer's mark than is applicant's mark."

Applicant also pointed to the lack of actual confusion but the Board found that argument to be "of little value" because the record lacked evidence relating to the extent of use of Applicant's mark and the existence of "meaningful opportunities for instances of actual confusion to have occurred." Of course, in any case, proof of actual confusion is not needed to establish likelihood of confusion.

Finally, under the 13th du Pont factor, the Board noted that the parties used their respective marks on shoes in identical fashion, and both in red.

The Board therefore sustained the opposition.

TTABlog comment: I wonder how many different versions of elongated triangles, tapered stripes, slashes, etc., are in use in the market today for running shoes? Is it even legal to sell a running shoe that doesn't display an elongated triangle, tapered stripe, slash, or the like?

Text Copyright John L. Welch 2009.


At 5:38 PM, Blogger Malachi 3:16 said...

John - how about the Nike swoosh?

I wouldn't even go there.....

At 10:37 AM, Anonymous Feigin / Patent Attorney said...

They basically both variations on a diagonal line... in such a crowded field as diagonal lines, I'd grant TMs for minor differences... one wouldn't confuse one mark for another as the minor differences are a big deal here!


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