Monday, May 17, 2010

Finding "BORN=OFFICIAL & Design" and "BØRN" Too Dissimilar, TTAB Dismisses 2(d) Opposition

This Section 2(d) opposition hinged on the issue of the similarity of the marks. Applicant Delfyette sought to register the logo mark shown below left for various items of men's, women's, and children's sportswear. Opposer claimed likelihood of confusion with, and likely dilution of, its registered marks shown below right, for footwear and leather goods, respectively. Columbia Insurance Company v. Eric J. Delfyette, Opposition No. 91177903 (May 13, 2010) [not precedential].

Opposer claimed that its marks are famous, but its proofs fell far short. [Good bye, dilution claim! - ed..] Applicant attempted to show that Opposer's marks are weak in light of a number of third party registrations [e.g., BORN INTO IT; BROOKLYN BORN; BORN IN THE BRONX; and BORN IN AMERICA], but the Board found th0se marks irrelevant since they each create specific and different commercial impressions. Moreover, mere registration is not evidence that the marks are actually in use. Thus the third-party registrations had no probative value.

As to the marks, the Board focused on the closer of the two marks of Opposer, and concluded that the presence of the Ø "is sufficient to impart a slightly different appearance and connotation than the term BORN in applicant's mark."

The Board observed that the similarity of the marks ends with the word "Born." Opposer maintained that the wording BORN=OFFICIAL in Applicant's mark suggests that the goods are "an authorized or 'official' BORN product - originating from or authorized by the same source." The Board, however, found that "highly speculative," especially in the absence of any evidence as to how Applicant intends to use his mark.

Applicant's mark includes a "prominent design of a highly stylized silhouette of a child or infant wearing oversized work or combat boots inside a circular carrier." This results in a "substantial difference between applicant's mark and the mark in opposer's '333 registration."

In view of the visually prominent design element in applicant’s mark and the differences in appearance, sound and connotation of the literal portions of the marks in the context of the parties’ goods, we find that, despite both marks including the highly similar wording BORN versus BØRN, the differences are sufficient to distinguish applicant’s mark from the mark in opposer’s ‘333 Registration; overall they convey dissimilar commercial impressions.

Likewise, Applicant's mark is not confusingly similar to the more dissimilar mark of Opposer's second registration (having a crown design within the letter O).

And so the Board dismissed the opposition.

TTABlog comment: Note that Opposer is an insurance company. Would you buy footwear from an insurance company? Maybe if it's a sole proprietorship.

Text Copyright John L. Welch 2010.


At 8:25 PM, Anonymous Josh said...

We come for the pithy summaries, but stay for the awful puns.

At 10:10 AM, Anonymous Peter in NYC said...

> Note that Opposer is an insurance company. Would you buy footwear from an insurance company? Maybe if it's a sole proprietorship.

Only a heel would oppose the Applicant's petition.


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