Monday, November 06, 2017

TTAB Test: Is "SLAY OR PREY" Confusable With "PRAY THEN SLAY" for T-Shirts?

The USPTO refused registration of the mark SLAY OR PREY, in standard character form, for various clothing items including T-shirts, finding it likely to cause confusion with the registered mark PRAY THEN SLAY & Design (specimen below) for "T-shirts; T-shirts for adults." How would you decide this appeal? In re Manuel E. Tellez, Serial No. 87229195 (November 3, 2017) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Because the goods are in part identical, the Board must presume that they travel in the same, normal channels of trade to the same classes of consumers.

As to the marks, the Board took judicial notice of the meanings of "pray," "prey," and "slay" from (the Random House Dictionary).

Clearly, although “prey” and “pray” are phonetic equivalents, their meanings differ sharply. Taking into account this significant difference, we find that Applicant’s mark most likely gives the impression of presenting a choice to either kill or become a victim by falling prey to a predator. By contrast, we find that the registered mark most likely conveys a command to first confer with the divine through prayer, and next to impress others (the slang meaning of “slay”). The mark may suggest that prayer will lead to making a strong impression on others – i.e. if you pray, then you will slay. Alternatively, Registrant’s mark could be viewed as a call to faith-inspired violence – i.e. to pray and then slay, in the traditional sense of the word.

The Board therefore found the overall connotations and commercial impressions of the two marks to be dissimilar. Moreover, because of the transposition of the words, the marks do not look or sound identical, though there is some similarity. Consumers reading the marks would recognize the different meanings of "pray" and "prey."

The Board noted that the transposition of words does not necessarily avoid a likelihood of confusion between two marks, but here there is not only a transposition but different words with different meanings.

Overall, we find the marks in this case dissimilar, particularly because of their very different connotations and commercial impressions.

Noting that a single du Pont factor may be dispositive, especially when it is the first factor, the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Was this a close call? What are these PRAY/SLAY marks all about? Why was there no ornamental refusal of the PRAY THEN SLAY mark?
BTW: How about SLEIGH AND PRAY, which brings to mind the image of a small child kneeling before a stocking-lined chimney fireplace at Christmas?

Text Copyright John L. Welch 2017.


At 9:39 AM, Anonymous Anonymous said...

As for your question as to why there was no ornamental refusal for PRAY THEN SLAY, the mark was registered on the Supplemental Register, which was done by Examiner's Amendment (according to the prosecution history for that mark). This was most likely done to prevent just such a refusal, since ornamental marks are registrable on the Supplemental Register.

At 10:59 AM, Anonymous Keith said...

I would like to see the "ornamentation" refusal of such "message" marks used with vigor against the many "N word" applications now in the pipeline.

At 11:04 AM, Anonymous Anonymous said...

The cited mark is registered on the Supplemental Register (via Examiner's Amendment), which was almost certainly prompted by ornamental concerns.

At 1:23 PM, Anonymous Anonymous said...

I would like to know what that "mark" is supposed to mean.

At 4:15 PM, Anonymous Anonymous said...

What happened to the concept that if two marks sound similar, confusion is likely.

At 7:45 PM, Anonymous Anonymous said...

The principle is that there MAY be confusion between two marks that sound the same or similar.


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