Wednesday, December 04, 2019

TTAB Dismisses Opposition to BLUE INDUSTRY for Clothing, Finding INDUSTRY to be a Weak Formative

The Board dismissed this opposition to registration of the mark BLUE INDUSTRY for various clothing items, finding no likelihood of confusion with, and no likelihood of dilution of, various INDUSTRY-formative marks owned by Opposer Pure & Simple for clothing and related retail store services. As to the Section 2(d) claim, the Board found that "[g]iven the sheer volume of third-party registrations and examples of third-party use, consumers are conditioned to look for differences between INDUSTRY formative marks to determine the source of a given product and are therefore less likely to be confused." Pure & Simple Concepts, Inc. v. I H W Management Limited DBA The Finchley Group, Opposition No. 91234659 (November 26, 2019) [not precedential] (Opinion by Judge Angela Lykos).

Third-Party Use and Registration: Opposer claimed to own a family of six INDUSTRY formative marks for clothing, promoted together on the website of its licensee. The Board pointed out, however, that a "family of marks" requires that the "family" feature be distinctive (i.e., "not descriptive or highly suggestive or so commonly used in the trade that it cannot function as the distinguishing feature of any party’s mark").

Here, applicant established that a "significant number of third parties have registered or used INDUSTRY formative marks in connection with clothing and apparel:" 74 third-party registrations for marks including the word INDUSTRY and 12 examples of advertised use.

Thus, the alleged family term, INDUSTRY, or the plural thereof, has been ubiquitously registered and used to identify clothing and apparel, making it both conceptually and commercially weak. This precludes a finding that Opposer owns a family of marks for the shared INDUSTRY element.

Turning to the sixth du Pont factor, the Board found that opposer's INDUSTRY-formative marks "all fall on the weak side of the spectrum, meaning that their scope of protection is limited." Therefore this factor weighted against opposer.

Because the term INDUSTRY is entitled only to a "restricted scope of protection," it will bar registration only of a mark "as to which the resemblance ... is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two." The Board found that the addition of the word BLUE was enough to distinguish applicant's mark, since "the mark as a whole does not bear a 'striking' resemblance in appearance, sound, meaning or commercial impression to any of Opposer’s pleaded registered marks."

Noting that the Board is "not concerned with the mere theoretical possibilities of confusion, deception or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal," the Board found confusion unlikely and it dismissed opposer's likelihood of confusion claim.

Dilution by Blurring: Of course, the predicate for a dilution claim is proof that the claimant's mark has become famous. "Opposer must show that, when the general public encounters the mark 'in almost any context, it associates the term, at least initially, with the mark’s owner.' Coach Servs., 101 USPQ2d 1725, (quoting Toro, 61 USPQ2d at 1180). A famous mark is one that has become a 'household name.' Id."

The Board found that opposer's evidence of fame fell short.

[W]e did not find that Opposer owns a family of INDUSTRY formative marks for clothing.Opposer owns a family of INDUSTRY formative marks for clothing. Opposer’s testimony fails to break down by each individual mark the number of years of use and sales figures for clothing items sold under each mark. And even if Opposer’s testimony had attributed these figures to one or more particular marks, we would still find no fame for dilution purposes since there is no evidence that any of Opposer’s marks have risen to the level of consumer recognition as a household name.

And so the Board dismissed opposer's dilution claim.

Read comments and post your comment here.

TTABlog comment: If you are defending against a Section 2(d) claim, you need to put in the effort to ferret out third-party uses and registrations. This time it paid off.

Text Copyright John L. Welch 2019.


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