Friday, November 04, 2016

TTAB Test: Is THE BEVERLY Confusable with BEVERLY JEANS & Design, Both For Jeans?

The USPTO refused registration of the mark THE BEVERLY for "denims; jeans; pants," finding the mark likely to cause confusion with the registered mark BEVERLY JEANS & Design, shown below, for "pants; shirts; tops; bottoms" [JEANS disclaimed]. Applicant contended that the marks are distinguishable because applicant's mark will be perceived as a "style name" for its "Forever 21" jeans while BEVERLY JEANS is a brand name. How do you think this came out? In re Forever 21, Inc., Serial No. 86678161 (November 2, 2016) [not precedential].

Applicant submitted website printouts showing how its mark is "actually used" and that it is "in conformance with marketplace convention for style names." According to applicant, "style names are commonly used in the jeans market" and "such style names commonly begin with the word 'The.'"

The Board was unmoved. Even if the applied-for mark is used as a style name, there is nothing to stop applicant from using it as a source-identifier for its products, and not just as a "style name." Nor are there any restrictions on applicant's use of its mark, nor any guarantee that "Forever21" will always appear in close proximity.

Even if consumers view applicant's mark as a "style name," confusion is still likely. Consumers familiar with the BEVERLY JEANS & Design mark may mistakenly believe that Applicant’s mark is merely a reference to Registrant’s style of jeans. That would be consistent with applicant's website evidence, which shows third-party usage of "The" as a prefix in a second reference to the same goods (e.g., "The Fayza" referring to "Fayza Boyhood Jeans").

If consumers do not perceive applicant's mark as a style name, the involved marks are confusingly similar. The word "The" will be seen as "having no source-indicating significance or as simply directing focus back to the common term, BEVERLY, which dominates both marks."

The similarity between the marks is enhanced by the fact that BEVERLY has no demonstrated significance vis-a-vis the involved goods and appears to be an arbitrary use of what is otherwise a proper name. There was no showing that any other entities use this term and Applicant made no argument that BEVERLY is weak or diluted.

The Board found the marks to be "very similar" and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: The Beverly sounds like a hotel, while Beverly Jeans sounds like a person's name. Oh, wait, we're talking about clothing here. So never mind.

Text Copyright John L. Welch 2016.


At 10:12 AM, Anonymous Lawrence Binderow said...

WYHA? What were they thinking?

At 2:31 PM, Anonymous Anonymous said...

Another terrible decision by the TTAB. "THE BEVERLY" is an incongruous term (what is "the Beverly"?). Beverly Jeans is a natural looking trademark. The differences are striking.

At 4:54 PM, Anonymous Anonymous said...

Is Anonymous 2:31PM kidding? Take out the descriptive "jeans" and "the" and you have Beverly v. Beverly.

Maybe he/she should try to register THE GUCCI, THE GUESS, etc. for jeans and see what happens.

At 11:41 AM, Anonymous Anonymous said...

Oh, so BEVERLY is a famous trademark? Anonymous 4:54 you must be an examining attorney...a very mechanical approach to a very nuanced area of law. The TTAB HAS held that the word "THE" can make all the difference and they HAVE held that generic words can make all the difference, in a likelihood of confusion analysis.

At 2:46 PM, Anonymous Anonymous said...

You guys are touchy! Of course adding "The" to another word can make a difference in connotation (such as ROCK jeans or THE ROCK jeans) on a case-by-case basis or as JW said with relation to a hotel or restaurant. If you take a look at the briefs, Applicant's attorney did not try very hard (I am being nice). Applicant apparently attempted to create new case law about "style marks", but TTAB is right on this one and gave him the hand via "Applicant's argument is not well taken" in that there is nothing stopping Applicant from using the mark as a source identifier. I chalk this up to a Yoda defense tactic and attorney-trying-to-bill gibberish

FYI, surprised that the old Model Designation issue was not brought up


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