Friday, October 07, 2016

TTAB Test: Is TRINITY for Handbags Confusable with TRINITY for Jewelry?

Cartier International opposed an application to register the mark TRINITY for leather handbags, alleging a likelihood of confusion with the identical mark registered for jewelry. The marks are identical, but what about goods? Are they related? How do you think this came out? Cartier International A.G. v. Lance Coachman, Opposition No. 91209815 (October 5, 2016).

Of course, since the marks are identical, a lesser degree of similarity between the goods is necessary to support a finding of likely confusion. Applicant Coachman contended that Cartier's mark is descriptive of its jewelry, which is commonly composed of three rings of different metals, differing in color and/or finish. The Board pointed out that the validity of opposer's registration cannot be attacked absent a counterclaim, so it considered applicant's argument as one directed to the weakness of the registered mark.

The Board found that, although Cartier emphasizes the three bands of different gold in its advertising, TRINITY is "at worst suggestive" of the goods. With regard to market strength, the Board found TRINITY to be a strong mark for jewelry, based on "not insubstantial" sales and advertising expenditures, and on unsolicited media references to Cartier's iconic ring.

Applicant pointed to a third-party registration and use of TRINITY for handbags, but it provided only three uses and one registration, clearly not enough to show that third parties are "conditioned" to distinguish between TRINITY-formative marks.

To establish the relatedness of handbags and jewelry, Cartier submitted excerpts from 14 websites at which third parties sell both jewelry and handbags under the same mark: e.g., CHANEL, COACH, and GUCCI. Applicant countered with excerpts from 14 websites at which jewelry but not handbags, or vice versa, were offered for sale under the same mark. [Huh? - ed.]. The Board, however, pointed out that there is no requirement that all, or even a majority, of the sources of one product must also be the sources of the other.

Applicant argued that the relevant purchasers of the involved goods would exercise a high degree of care in their purchasing decisions. However, there are no limitations in the opposed application or pleaded registration, and so the Board must consider them to encompass inexpensive jewelry and handbags. The Board concluded that this factor was neutral.

Finally, applicant pointed to the lack of evidence of actual confusion, but the Board found that there had not been a reasonable opportunity for confusion to have occurred. Applicant spent only $6,000 in promoting and advertising his handbags, and most of that was in the form of giveaways. He has not promoted the handbags at trade show, has had minimal media exposure, and sold his handbags only to individuals and not retailers. His sales have been de minimis.

The Board concluded that confusion is likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: The smaller they are, the harder they fall. Are all fashion accessories related for Section 2(d) purposes? Handbags and umbrellas? Jewelry and clothing? Watches and nylons?

Text Copyright John L. Welch 2016.


At 12:39 PM, Anonymous Anonymous said...

"Of course, since the marks are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion"

Did you mean "since the marks are identical, a lesser degree of relatedness between the goods is necessary to support a finding of likely confusion"?

At 12:59 PM, Anonymous Melissa Martinez said...

In the South we say "Bless their heart." They didn't stand a chance.

At 1:43 PM, Blogger John L. Welch said...

Fixed it. Thanks!

At 6:51 PM, Anonymous Anonymous said...

Does anyone know any good techniques for identifying "paired" marks (same marks owned by different owners for allegedly related goods) to rebut EA evidence of relatedness a la Mucky Duck?

At 1:50 PM, Anonymous Anonymous said...

Finding evidence to refute relatedness can be a very difficult task.

An examiner can easily provide relatedness evidence because there is always someone who registered a mark covering the items at issue.

The main problem is when you provide clear evidence to refute - the examiner simply dismisses it, "gives it less weight", or just says "on balance it does not matter."

I think we are at the point of the "absurd extreme," where examiners are finding virtually all products and services to be related. And there is almost nothing you can do because it is simply a matter of opinion with no clear line.


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