Monday, August 02, 2010

TTAB Reverses 2(d) Refusal of "LEG BALANCE" for Athletic Apparel Over "FOOT BALANCE" for Leather Footwear

Balancing the du Pont factors like a legal hacky-sack, the Board reversed a refusal to register the mark LEG BALANCE for "athletic apparel, namely, shirts, singlets, jackets, shorts, tights, running suits, bras, briefs and socks" [LEG disclaimed], finding the mark not likely to cause confusion with the registered mark FOOT BALANCE for "leather boots and shoes." The weakness of the word "Balance" as a formative was a major factor in the Board's du Pont analysis. In re ASICS Corporation, Serial No. 77493747 (July 23, 2010) [not precedential].

The goods: The key question regarding the relatedness of the goods was whether athletic shoes are made of leather. The Examining Attorney submitted website evidence that clearly established that athletic shoes and athletic apparel are closely related, but how related are leather shoes? [Aren't baseball cleats made of leather? Soccer shoes? - ed.]

Several third-party registrations that included a wide variety of goods, encompassed both leather shoes and athletic shoes and apparel. But "[i]n view of the breadth of the goods identified in the registrations and the fact that these registrations are not evidence of the use of the respective marks on those goods," the Board deemed this evidence "not probative at all of whether athletic shoes may be made of leather or of the extent to which leather shoes may be used in connection with or are otherwise related to athletic apparel."

In this case, registrant’s goods encompass all types of shoes made of leather. However, the examining attorney has not established that athletic shoes may be made of leather. Thus, the examining attorney has not established that athletic apparel and leather shoes would be used together, are complementary, or are otherwise related such that purchasers would believe they come from the same source.

Therefore the Board found that this du Pont factor favored Applicant.

Channels of trade/Consumers: Despite its finding regarding the non-relatedness of the goods, the Board concluded that they would travel in the travel in the same trade channels: "at least on-line retailers and department stores." [That's rather broad, isn't it? - ed.] Moreover, since there are no limitations in the identifications of goods, the Board must presume that the goods are purchased by the same consumers, and include "relatively inexpensive athletic apparel and leather footwear" that would be purchased with only ordinary care.

The marks: Based on third-party registration evidence, Applicant argued that "Balance" is a weak-formative in connection with athletic apparel and leather shoes and boots. The Board agreed.

The coexistence on the register of so many similar marks for related and similar goods suggests that BALANCE is either highly suggestive or ubiquitous in connection with these goods; and that the differing first word in each mark is sufficient to distinguish the marks from each other.

Comparing the marks in their entireties, the Board found them not sufficiently similar to support a Section 2(d) refusal.

Conclusion: The Board reversed the refusal.

TTABlog comment: One of the websites considered by the Board emanated from the U.K. The Board noted that "it is obviously available for viewing in the United States." But so is every website from any country. What relevance should a U.K. website have regarding the issue of the relatedness of goods in the USA?

For more commentary on that issue, see Welch and Lamport Hammitte, "The TTAB and Foreign Website Evidence: Quo Vadis?."

Text Copyright John L. Welch 2010.


At 2:21 PM, Anonymous Anonymous said...

So is it "Leather Boots and Leather Shoes" or is it "Shoes and Leather Boots." Clearly, they went the more limiting way.

If the registration was for "Footwear; Shoes" would the result have been different?

It shows the importance of getting a good description and including both broad and specific language in the same ID? "Perhaps Footwear; Shoes; Leather Boots; Leather Shoes?

I normally would just go Footwear, but I am wondering if the Board would then let newcomers "sneak" in with more specific limiting language?

I always thought the Board would protect a broad description against a newcomer, but perhaps not.

Is there an opposition soon to come?


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