Tuesday, August 31, 2010

TTAB Affirms 2(d) Refusal of "MARSHLAND" Over "MARSHLANDER," Finding Camouflage Fabric and Raingear Related

The Board affirmed a Section 2(d) refusal to register the mark MARSHLAND for camouflage fabric "sold as an integral component of finished clothing items," finding the mark likely to cause confusion with the registered mark MARSHLANDER, in standard character and design form, for raingear. In re NTA Enterprise, Inc., Serial No. 77575867 (August 6, 2010) [not precedential].

The Marks: Not surprisingly, the Board found the marks to be similar. The "ER" suffix is not sufficient to differential the marks, and the design element of Registrant's mark merely reinforces the "impression of [a] person from a marshy or swampy region (i.e., a marshlander)."

Applicant pointed to six third-party registrations for marks that include the word "MARSH" for clothing items, but there was no evidence that the marks "are actually being used, much less that the extent of such third-party use is so great that consumers have become accustomed to seeing the various marks and, therefore, have learned to distinguish them."

The Board observed that third-party registrations may be used in the manner of a dictionary to show that a term is descriptive or suggestive of goods or services, but six registrations "do not prove that the term MARSHLANDER is so weak and diluted that applicant's change to MARSHLAND is sufficient to distinguish the marks." "At most, 'Marshlander' may suggest that the clothing or fabric has an outdoor theme," and the mark is therefore inherently distinctive.

The Goods: Examining Attorney John M. Wilke submitted excerpts from various websites "advertising clothing referencing the fabric from which the clothing is made."

This evidence demonstrates that retailers advertise clothing and fabrics together and, therefore, consumers of finished clothing items may come in contact with the fabric and the mark for the fabric from which the clothing items are made. Accordingly, we find that consumers are likely to ascribe a common origin to fabric and finished clothing that share a similar trademark.

The Board also noted that the website evidence included numerous examples of camouflage raingear: "Consumers could easily mistakenly believe that applicant's camouflage fabrics and registrant's raingear emanate from the same source because of the similarity of the marks."

Moreover, the involved goods would move through the same retail clothing channels and would be encountered by the ultimate consumer.

And so the Board concluded that confusion is likely.

TTABlog comment: Note that there was no evidence that both fabric and clothing is sold under the same mark. But still, if you saw a MARSHLANDER brand jacket next to a jacket featuring MARSHLAND brand fabric, you would likely be confused, wouldn't you?

Text Copyright John L. Welch 2010.


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