Thursday, April 13, 2017

Finding Watches and Clothing Related, TTAB Affirms Section 2(d) Refusal of MARIE-ANTOINETTE

The Board affirmed a Section 2(d) refusal to register the mark MARIE-ANTOINETTE for various goods in classes 9, 18, and 25, including sunglasses, handbags, and clothing, finding the mark likely to cause confusion with the registered mark BREGUET MARIE-ANTOINETTE for jewelry and watches. Applicant contended that BREGUET is the dominant element in the cited mark, but the Board cut short that argument. In re Tempting Brands Netherlands B.V., Serial No. 79161682 (April 11, 2017) [not precedential] (Opinion by Judge Bergsman).

The Marks: The Board observed that there is no per se rule as to how the addition of a house mark or a designer name to similar product marks affects the analysis of whether marks are similar or dissimilar.

[S]uch addition may actually be an aggravation of the likelihood of confusion as opposed to an aid in distinguishing the marks so as to avoid source confusion. On the other hand, where there are some recognizable differences in the asserted conflicting product marks or the product marks in question are highly suggestive or merely descriptive or play upon commonly used or registered terms, the addition of a housemark and/or other material to the assertedly conflicting product mark has been determined sufficient to render the marks as a whole sufficiently distinguishable. In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (citations omitted) (Applicant's LE CACHET DE DIOR is similar to the registered mark CACHET).

When the common part of the marks is identical, as here, purchasers familiar with registrant’s mark are likely to assume that the house mark or designer name simply identifies what had previously been an anonymous source. The name MARIE-ANTOINETTE is an arbitrary term in this context because it describe or suggest any qualities, characteristics or features of eyeglasses, handbags, clothing, jewelry or watches.

The Board concluded that that involved marks are similar in appearance, sound, connotation, and commercial impression.

The Goods: Examining Attorney Christopher M. Law submitted numerous third-party web pages showing the same mark in use for sunglasses, handbags, clothing, and jewelry or watches. The third-party uses included designer names or house marks (e.g., TOMMY HILFIGER), and the Board recognized that "because such marks may be licensed for a broader range of unrelated goods and services they may be of less probative value to show that goods are related."

[T]he third-party uses are persuasive evidence because, as vigorously argued by Applicant, Registrant’s mark includes a house mark, and consumers understand that Registrant would sell or license its BREGUET name/mark on a wide variety of products. Thus, consumers familiar with BREGUET MARIE-ANTOINETTE products in connection with jewelry and watches, encountering MARIE-ANTOINETTE eyeglasses, handbags, and clothing may mistakenly believe that those fashion products emanate from the same source.

Moreover, these items are used together "in the scheme of presenting oneself in a desired, stylish manner; they are related to the extent that the goods are part of the overall fashion picture which encompasses apparel and accessories"

Finally, applicant argued that registrant's goods are very expensive and would be purchased with care, but the Board pointed out that there were no such limitations in the registration. Registrant's broadly-written identification of goods encompasses inexpensive watches.

Conclusion: The Board affirmed the refusal to register

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TTABlog comment: Was this a close case? I think not.

Text Copyright John L. Welch 2017.


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