Wednesday, August 25, 2010

TTAB Reverses 2(d) Refusal of "WISH YOU WERE HERE" for Underwear

The "strong differences" in the marks, coupled with the differences in the goods, led the Board to reverse a Section 2(d) refusal to register WISH YOU WERE HERE (in standard character form) for underwear. The Examining Attorney maintained that the mark was likely to cause confusion with the mark depicted immediately below, for "women’s dresses, shirts, skirts and apparel." In re Diane R. Gunter, Serial No. 77227513 (August 20, 2010) [not precedential].

The Marks: The Board agreed with Applicant Gunter that the Examining Attorney improperly focused on the common phrase "wish you were here."

The words “Love, Jetsy” and the overall postcard design are very noticeable and they have the effect of catching the eye and engaging the viewer before the viewer even looks at the phrase “Wish you were here!” In this context, the “Wish you were here!” phrase is a postcard cliché that acts merely to reinforce the design element of the postcard, and would not otherwise make an impression on the viewer.

The Board concluded that the marks differed "significantly in appearance, pronunciation, connotation and commercial impression."

The Goods: As to the goods of the cited registration, the Board refused to read "shirts" to include underwear, and it pointed out that "apparel" means outer garments. The Examining Attorney's probative Internet evidence (two websites) at most showed that the trade channels for the involved goods overlap, but that was not enough to prove that the goods are "closely related."

The Board therefore reversed the refusal to register.

TTABlog comment: It seems to me that the phrase "wish you were here" on underwear has quite a different connotation from "wish you were here" on a postcard. Unless maybe it's a French postcard?

Text Copyright John L. Welch 2010.


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