TTABlog Test: Are These Two Four-Legged Animal Design Marks Confusable for Clothing?

Another test for you. Abercrombie & Fitch opposed an application to register the mark RED DEAR & Design, shown below left, for various clothing items, claiming a likelihood of confusion with its two registered "Moose logo" marks shown below right, for overlapping clothing items. Applicant Shnittger, appearing pro se, stipulated to several facts, including Abercrombie's ownership and the validity of the registrations, and a congruence of consumers. Shnittger also admitted that the marks depict "profiles of full-bodies, four-legged animals with antlers in silhouette form." But what about the words "Red Dear?" Shnittger argued that no one company should be allowed to associate any "antlered" animal with its brand. How do you think this came out? Abercrombie & Fitch Trading Co. v. Isabella Elisabeth Shnittger, Opposition No. 91218738 (August 12, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

The Board first addressed Abercrombie's claim that its marks are famous. Opposer's evidence, filed under seal, showed that it has been "quite successful" in selling clothing under its marks, but its sales and advertising figures and website visits were not placed in context vis-a-vis other brands of clothing, nor was it clear to what extent consumers were exposed to the pleaded marks as opposed to Abercrombie's various other marks.

Nonetheless, the evidence established that the pleaded marks are "renowned" in the clothing field and are "commercially quite strong."

Of course, the overlapping goods are presumed to travel through the same trade channels to the same classes of consumers. As a result, a lesser degree of similarity between the marks at issue is necessary to support a finding of likely confusion.

Turning to the marks, the Board acknowledged that there are differences between the animals at issue, but the marks are "sufficiently similar in terms of their commercial impression that clothing consumers who encounter them would be likely to assume a connection between the parties."

Here, at least some consumers familiar with Opposer’s marks who later encounter Applicant’s mark will not remember which direction Opposer’s animal was facing, what its antlers looked like specifically or how its mouth was depicted. Rather, because of the fallibility of memory, they will have the “general rather than a specific impression” that Applicant’s mark, like Opposer’s, features a “full-bodied, four-legged anima[l] with antlers in silhouette form.”

As to the words "Red Dear" in Schnittger's mark, they are dwarfed by the deer design. Moreover, since the word "Dear" is the phonetic equivalent of "deer," it might call to mind Abercrombie's marks, which might also appear to some as a deer. [That's a stretch! - ed.]. For what it's worth, Applicant Schnittger admitted that "a moose is part of the deer family biologically . . . ."

The Board cited several prior cases in which the addition of words to a design was not enough to avoid confusion. For example:

The Board concluded that the differences between Abercrombie's and Schnittger's marks were insufficient to overcome the similarities when these "profiles of full-bodied, four-legged animals in silhouette form" are used on identical goods.

The Board therefore found confusion likely and it sustained the opposition, declining to reach Opposer's dilution claim. [In any event, since Abercrombie failed to prove fame in the likelihood of confusion context, it perforce could not meet the higher standard for dilution fame - ed.].

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TTABlog comment: Oh, deer! How prominent must the words RED DEAR be to change the outcome?

Text Copyright John L. Welch 2019.