Thursday, September 14, 2017

TTAB Test: Is "GUILTY OF EVERYTHING GOE" Confusable With GOE SURF WEAR & Design for Clothing and Gear?

The USPTO refused registration of the mark GUILTY OF EVERYTHING GOE for backpacks, clothing, and skateboards, finding the mark likely to cause confusion with the registered mark shown below, for athletic apparel [SURF WEAR disclaimed]. Third-party registrations and usage convinced the Board that the goods are overlapping and/or related, and travel in the same channels of trade (retail websites devoted to clothing, athletic apparel, and spots equipment). But what about the marks? How do you think this came out. In re Mathis Ventures LLC, Serial No. 86849413 (September 8, 2017) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Board observed that the word GOE in applicant's mark appears to be an acronym for GUILTY OF EVERYTHING, whereas GOE in the cited mark is the surname of the registration's owner. However, there is no evidence that consumers would perceive GOE as an acronym in applicant's mark, and no evidence that consumers would perceive GOE as a surname.

In view of registrant's disclaimer of SURF SHOP, the Board found the term GOE and the diamond design to be the dominant portion of the cited mark, and accordingly entitled to more weight in the Section 2(d) analysis. [Do consumers know SURF SHOP is disclaimed? - ed.]. In applicant's mark, however, GUILTY OF EVERYTHING appears to be arbitrary and distinctive, and is of at least equal prominence to the word GOE.

As a result, when the marks GUILTY OF EVERYTHING GOE and [the cited mark] presented in its very specific design format are viewed in their entireties, they are more dissimilar than similar in appearance and sound and convey different connotations, namely, that Applicant’s mark acknowledges and celebrates even disreputable actions while the registered mark indicates surf wear originating from an individual named Goe.

Although the goods are related and appear to travel in the same channels of trade, the marks are only "somewhat similar," and therefore the Board the confusion is not likely and it reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Let's GOE surfin' now, Everybody's learnin' how, Come on a safari with me ......

Text Copyright John L. Welch 2017.


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