Monday, September 23, 2019

TTABlog Test: Is This Fish Hook Design Mark for Clothing Confusable with "VF" for Retail Clothing Services?

V.F. Corporation opposed an application to register the design mark shown immediately below, for bumper stickers and various clothing items, claiming a likelihood of confusion with its registered mark VF, in standard character form, for retail store services featuring apparel, backpacks, and outdoor gear and equipment. In his application, Applicant Anthony Fisher described his mark as follows: "The mark consists of two fish hooks connecting in the middle to form the stylized letters 'VF'." How do you think this came out? V.F. Corporation v. Anthony Fisher, Opposition No. 91236399 (September 19, 2019) [not precedential] (Opinion by Judge Jyll Taylor).

Opposer filed a motion to amend the description of applicant's mark to state that the mark "consists only of a stylized letter 'V'," asserting that this "correction" would "conclusively establish[]" that applicant's mark does not consists of the letters "VF." The Board, however, found that opposer had "no authority to seek unilateral amendment of Applicant's application but, more importantly, the accuracy of the description statement is an examination issue and not a ground for opposition." The Board therefore refused to consider the motion.

The Goods and Services: Not surprisingly, the Board found applicant's clothing items to be related to opposer's retail apparel store services. However, it found no relatedness between applicant's bumper stickers and opposer's services.

The Marks: Opposer argued that the "literal portion" of the challenged mark is identical to its VF mark. However, it maintained that if its motion to change the mark's description were allowed, the marks "could coexist based on the overall visual differences between the marks."

Putting aside the argument based on opposer's motion, which the Board had refused to consider, the Board pointed out that it is the drawing of the mark, "not the words an applicant used to describe it, that determines what the mark is." See Trademark Rule 2.52: "A drawing depicts the mark sought to be registered."

The Board found the marks to be dissimilar in appearance, sound, meaning, and commercial impression, "notwithstanding that Opposer is entitled to all depictions of its standard character mark regardless of font style, size, or color." In re Viterra Inc., 101 USPQ2d 1905, 1909-10 (Fed. Cir. 2012). As recognized in Viterra, a standard character mark does not encompass all possible design elements in a mark.

Here, while Applicant may have intended that its design mark represent the letters "VF," we do not discern the letter "F" and it is highly unlikely that prospective consumers would. In fact, consumers likely would not perceive any letters in Applicant's design mark but instead may only perceive a stylized checkmark. We simply find no similarity in appearance, sound, meaning and commercial impression between Applicant’s design mark and Opposer’s standard character mark "VF," no matter how Opposer would present those letters.

Finding the first du Pont factor to be dispositive, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: A strange one. Seems like opposer is just as happy with a finding of no likelihood of confusion.

Text Copyright John L. Welch 2019.


At 11:16 AM, Anonymous Anonymous said...

Re: Opposer being just as happy with outcome, my guess is that Opposer is trying to build a record of policing its potentially weak two letter "VF" mark. Of course, public perception governs at the end of the day, but losing marketplace strength by failing to enforce may be a concern for Opposer.


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