Monday, June 16, 2014

TTAB Finds Confusing Similarity Between "Paw" Design and "KELME & Paw Design" For Clothing

New Millennium Sports clawed its way to victory in this Section 2(d) opposition to registration of the "paw" design mark shown below left, for various clothing items. The Board found that mark likely to cause confusion with the registered mark KELME & paw design shown below right, for overlapping clothing items. Applicant Jack Wolfskin counterclaimed to cancel opposer's pleaded registration, contending that opposer had ceased using the mark in 2004 in favor of a different mark. But the Board disagreed. New Millennium Sports, S.L.U. v. Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGaA, Opposition No. 91195604 (June 10, 2014).

Counterclaim: Jack Wolfskin asserted that New Millennium, by using its mark in the form shown below, had abandoned the registered mark because the new mark was "materially different in character from" the registered mark.

The Board observed that a change in form of a mark "does not constitute abandonment or a change in continuous use if the change neither creates a new mark nor changes the commercial impression of the old mark." Jack Wolfskin argued that the design in the "replacement mark" was clearly a paw, whereas in the mark as registered the design could be interpreted as "a mountain with the sun's rays, a volcano, a setting sun, or an abstract design."

The Board found that the modified version did not constitute a material alteration of the mark as registered. The style of lettering in each is non-distinctive and highly conventional, and the change in style does not affect the literal portion of the mark. As to the design portion, the primary change in the modified design is the addition of "claws" to the "paw" design.  The Board was not persuaded that the original design would be interpreted as something other than a paw. Rather, the design conforms to "conventional concepts of what an animal's paw or paw print would look like." [see examples below].

The addition of claws to the design are "typical of variations to be reasonably expected in representations of animals' paws." In short, the differences between the original and the modified marks do not constitute a material alteration of the mark, and so the Board dismissed the counterclaim.

Likelihood of confusion: The key question, of course, was the similarity of the marks. Applicant Wolfskin pointed out that its mark is a design with no literal element and is clearly a paw but "without claws." It asserted that New Millennium's mark "look like something drawn by a child; that if it is perceived to be a paw, it would be the paw of a harmless pet, whereas applicant's design depicts the paw of 'an animal that ... has not been domesticated.'" Moreover its design is depicted realistically at an angle and is symmetrical, unlike opposer's design.

The Board pointed out that, even if KELME is the dominant portion of opposer's mark, the design portion creates a distinctive commercial impression that cannot be ignored. The Board concluded that, despite their differences, the two designs have "substantial visual similarities." Moreover, the marks at issue create substantially similar commercial impressions.

Companies that use marks consisting of a word plus a logo often display their logos alone, unaccompanied by the literal portions of their trademarks. Indeed, opposer has demonstrated that it sometimes displays its paw design (in its modified form) separate and apart from the KELME designation. Applicant’s mark could therefore be interpreted by customers as a display of opposer’s design, apart from opposer’s word element.

Applicant submitted substantial evidence of third-party registration and use of "paw" designs, the most relevant shown immediately below. The Board noted that only the mark in Exhibit F resembled opposer's design; the other four have five digits and "very prominent" claws.

Most of the Internet evidence related to apparel associated with universities, high schools, and athletic teams. (see below). Of the 19 such designs, some "quite closely resemble opposer's design."

The Board found it significant that these marks are displayed on apparel primarily in an ornamental fashion. Moreover, they indicated "an association with particular colleges, high schools, and their sports teams, rather than to identify an apparel company or a sporting goods company." They are often displayed with the name of the actual manufacturer of the goods, and serve as secondary source indicators. This somewhat reduces their impact on the distinctiveness of New Millennium's mark.

The Board concluded that this duPont factor was neutral.

Balancing the relevant factors, the Board found confusion likely, and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  Well, do you agree with the Board?

Text Copyright John L. Welch 2014.


At 6:11 PM, Anonymous Anonymous said...

Absurd decision for a lot of reasons. It felt like the Board knew the marks were not close, but went out of their way to support the reverse.

Another reason to avoid the TTAB and go to USDC.

I like that the Board gave no weight to the fact that the Post-Registration Division of the Patent and Trademark Office granted the request for renewal of opposer’s registration, but then they went ahead and said the change was not material.

I would have ventured a small bet an examiner would have refused the "non-material change" if it had been an initial examination.

This part of the analysis was interesting:

"Companies that use marks consisting of a word plus a logo often display their logos alone, unaccompanied by the literal portions of their trademarks."

They had to

If I were the Applicant I certainly would have divided out the other classes from the application immediately rather than have them sit in limbo for all this time.


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