Thursday, January 21, 2010

TTAB Enters Summary Judgment: "RED KAP" and "RED SNAP" for Clothing Too Dissimilar for Confusion or Dilution

The Board needed only ten pages to grant Respondent's summary judgment motion, ruling that Respondent's mark RED SNAP for various clothing items is not confusingly similar to, nor likely to dilute, the registered mark RED KAP for clothing. Imagewear Apparel Corp. v. Wings Manufacturing Corporation, Cancellation No. 92045101 (January 15, 2010) [not precedential].

Petitioner Imagewear Apparel asserted that RED is "highly distinctive if not arbitrary in connection with clothing." Respondent disagreed, submitting evidence of many third-party uses of RED in connection with clothing. [The Board gave no weight to third-party registrations because of lack of evidence of actual use of the marks therein]. The Board found the term RED to be a weak formative in the clothing field.

Based on the existence of these third-party marketplace uses of the term RED in connection with clothing, we cannot find that petitioner’s marks are entitled to an elevated scope of protection.

The Board then rejected Petitioner's claim that its mark is famous, noting its "relatively small advertising expenditures and the limited number of unsolicited articles (most of which are in specialized trade publications) concerning petitioner's RED KAP mark." Finding no genuine issue that the term RED is weak and the mark RED KAP is not famous, and "given that the marks are so dissimilar," the Board entered summary judgment on the Section 2(d) claim.

... the term KAP and its phonetic equivalent “cap” have entirely dissimilar meanings to that of the word SNAP; and viewing the marks overall as we must, we find the marks to be so dissimilar that as a matter of law there is no genuine issue of material fact that RED KAP and RED SNAP are not confusingly similar and that respondent is entitled to entry of summary judgment in its favor.

Turning to dilution, the Board pointed out that the marks at issue must be "substantially similar" to support a dilution claim. [If Petitioner's mark were diluted, would it become PINK KAP? -ed.] Here, since the marks are not sufficient similar for purposes of Section 2(d), they perforce are not substantially similar for dilution purposes. And so the Board entered summary judgment in favor of Respondent on this claim as well.

Text Copyright John L. Welch 2010.


At 10:32 AM, Anonymous Anonymous said...

Seems like a good candidate for WYHO. I wouldn't advise a client to oppose on these marks and couldn't assert fame on such an obscure mark with a straight face.


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