Friday, May 25, 2012

Test Your TTAB Judge-Ability: Are BODY FRUIT and FRUIT OF THE LOOM Confusingly Similar for Clothing?

Applicants sought to register the mark BODY FRUIT for various clothing items, but Fruit of the Loom, Inc., opposed, claiming likelihood of confusion with its registered mark FRUIT OF THE LOOM for overlapping clothing items. FOTL failed to establish fame under Section 2(d), but its mark is strong and the goods are, in part, identical. So did FOTL's opposition bear fruit? Fruit of the Loom, Inc. v. Thomas Riley, David Saulters and Peter Dragon, Opposition No. 91182644 (May 7, 2012) [not precedential].

Section 2(d) fame: Although FOTL proved that it extensively advertised its goods under the mark, that its brand is ranked by various publications as "highly valuable and recognized," and that various courts have found he mark to be famous, the evidence failed to show "the extent to which such activities and achievements translate into widespread recognition either of opposer's FRUIT OF THE LOOM mark or any of its other pleaded marks among the general public." FOTL did not provide sales or advertising figures, nor any context for ascertaining its market share. And so the Board refused to find the FRUIT OF THE LOOM mark famous for purposes of Section 2(d). However, the Board did find the mark to be strong.

The goods: The partial identity of the goods weighed heavily in FOTL's favor. Of course the Board must presume that these overlapping goods travel in the same normal channels of trade to the usual classes of consumers.

The marks: The Board picked FRUIT as the dominant portion of FOTL's mark, since it appears as the first word in the mark. As to connotation, FOTL's mark suggests that its clothing result from its labors. "Likewise, the word FRUIT in Applicants' mark refers back to, and reinforces, BODY, suggesting that its goods are fruit to be worn on or emanating from the body. Thus, both marks as a whole suggest that the parties' clothing products under their marks are fruit produced to be worn on the body." [Huh? - ed.]

The Board concluded that the similarities between the marks outweigh the differences, and it sustained the Section 2(d) claim.

FOTL also pleaded dilution, but the Board dismissed that claim: because FOTL failed to meet the standard for fame under Section 2(d), it could not meet the higher standard for fame under Section 43(c).

TTABlog comment: Well? How did you do?

Text Copyright John L. Welch 2012.


At 9:01 AM, Anonymous Jessica said...

Wow, I couldn't disagree more. The overall appearance, sound, meaning, and commercial impression of these two marks are dramatically different. A stronger applicant, one who actually defended its case, might have altered the outcome significantly.

At 9:34 AM, Anonymous Anonymous said...

Maybe they were thinking of Lady Gaga's meat dress. But FOTL is not famous? Really??
Susan G

At 12:52 PM, Anonymous Anonymous said...

Fotl may be famous,but this is
not dilution.

At 3:44 PM, Blogger Tom said...

What else did FOTL need to show fame? Without looking at their evidence, I'd think it's famous without question.

At 5:46 PM, Anonymous Orrin A. Falby said...

Being famous and actualy proving that your famous are not the same thing. I am certain that some of the judges that decided this case were wearing FOTL undies when they wrote the opinion.

At 7:55 PM, Anonymous Rob said...

If the mark is famous (not necessarily in the legal sense) then the plaintiff wins (forget any similarity test). Using this alone is enough to tell how the Board would rule in 95% of the cases.

At 1:19 PM, Anonymous Anonymous said...

Agreed, my experience is that the panel judges can be just as susceptible to the popularity of a mark, to where even when they don't find fame, their analysis reflects the kind of deference afforded the marks that prove fame under the more recent stricter standard. It just encourages the practice of large well funded companies to go after almost any mark that bears resemblance and leaves applicants without much to do but suffer the consequences.

At 1:34 PM, Blogger TheSolePursesuit said...

I find the marks to be dissimilar. What's confusing is why companies and their attorney's keep appearing before the TTAB without sale information and market share statistics. It is a prevalent theme in TTAB decisions.


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