Tuesday, September 18, 2018

TTAB Finds BOYY Merely Descriptive and Confusable with BOY, Both for Clothing

The Board affirmed Section 2(d) refusals to register the mark BOYY for sunglasses and clothing, finding the mark confusingly similar to the mark BOY, registered under Section 2(f) for partly identical clothing items. Applicant tried various arguments to overcome the refusal based on its existing registration for BOYY, issued in 2007 [and mistakenly referred to as "incontestable" by the Board] for bags and purses, but to no avail. To add insult to injury, the Board went on to find BOYY merely descriptive of applicant's goods. In re Boyy Inc., Serial Nos. 87298620, 87298664, and 87298682 (September 14, 2018) [not precedential] (Opinion by Judge Christopher Larkin).

The Board had little trouble finding the marks confusingly similar. Likewise, the mere descriptiveness refusal was straightforward, since the applied-for mark describes the intended users of the goods (male children).

In attempting to overcome the likelihood of confusion refusals, applicant pointed to its existing registration for the mark BOYY in class 18 for bags and the like, claiming that it was "merely moving into a natural area of expansion." It urged that its applied-for mark and its registered mark are legal equivalents, and therefore it is entitled to claim priority of its earlier mark. Furthermore, it asserted, the owner of the cited mark could not be damaged by the issuance of the new registration (Morehouse). The Board was unimpressed.

The Board pointed out that these arguments for the most part are not available in ex parte cases. The natural zone of expansion doctrine applies primarily in inter partes proceedings as a way to establish priority. In the ex parte context the concept is usually applied to determine whether the goods in the application are within the natural zone of expansion of the goods in the cited registration, not whether the applicant may register its mark over the cited mark because the applicant owns a prior registration for related goods.

As to the Morehouse argument (no damage to registrant), the Board pointed out that this defense does not apply in an ex parte context.

However, the prior registration must be considered under the 13th du Pont factor. As the Board recently stated in Inn at St. John's [TTABlogged here], where "an applicant owns a prior registration that is over five years old and the mark is substantially the same as in the applied-for application, this can weigh against finding that there is a likelihood of confusion."

In Strategic Partners [TTABlogged here], the Board reversed a refusal to register the mark ANYWEAR in stylized form for footwear over the registered mark ANYWEAR BY JOSIE NATORI for clothing, in light of applicant's ownership of an "incontestable" registration [I think the Board means a registration more than five years old - ed.] for ANYWEARS for footwear, which registration had co-existed with the cited registration for more than five years. The Board observed in Strategic Partners that the case "involves a unique situation presented by the coexistence of applicant's existing registration with the cited registration for over five years, when applicant's applied-for mark is substantially similar to its existing registered mark, both for identical goods." The Board then ruled that the 13th du Pont factor outweighed the others.

Here, however, there are two important differences. First the cited mark and the earlier registered mark have coexisted for less than five years. Second, the goods in applicant's prior registration are not identical or legally identical to the goods in the three applications at issue.

Therefore, the 13th du Pont factor weighs "only slightly in favor of a finding of no likelihood of confusion."

Read comments and post your comment here.

TTABlog comment: Compare this decision on the 13th du Pont factor to last month's LA CHULA decision [TTABlogged here], where the 13th du Pont factor was determinative despite less than five years of co-existence.

Text Copyright John L. Welch 2018.


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