TTAB Finds PATIO BY THE SPADES Confusable With KATE SPADE for Clothing and Handbags

In this long-running dispute between Kate Spade LLC and its founders, the Board sustained  oppositions to registration of PATIO BY THE SPADES for clothing and handbags, and THE SPADES for perfume, finding a likelihood of confusion with the registered mark KATE SPADE for clothing, handbags, and perfume. Obviously, the battle came down to the issue of the similarity or dissimilarity of the respective marks. Kate Spade LLC v. Thatch, LLC and The Spades Trademark Company, LLC, Oppositions Nos. 91216585 and 91217168 (January 9, 2020) [not precedential] (Opinion by Judge Lorelei Ritchie)

Because the involved goods are in part identical, the Board must presume that those overlapping goods travel through the same channels of trade to the same classes of consumers. The second and third du Pont factors weighed "heavily" in favor of a finding of likelihood of confusion.

As to the strength of the KATE SPADE mark, opposer's sales and advertising figures were "substantial." Applicants admitted that opposer enjoyed "long prior” use of its marks and that the KATE SPADE marks "have come to represent and symbolize extremely valuable goodwill and a widespread reputation belonging exclusively to Opposer."

Applicants submitted evidence of a half-dozen third-party marks that might be understood as referring to someone named SPADE, for similar goods or services, but the Board found that this evidence "does not detract substantially from the strength Opposer has demonstrated of the KATE SPADE mark."

Overall, we find the KATE SPADE mark to be conceptually strong and commercially very strong, including specifically for the goods at issue in this proceeding, and the fifth and sixth du Pont factors weigh strongly in favor of finding a likelihood of confusion.

Turning to the issue of the similarity or dissimilarity between the marks, the Board observed that [w]hile the marks have some obvious differences in sight and sound, they all end with the term SPADE/S." The parties disagreed as to the connotation and commercial impression of the marks.

Opposer’s KATE SPADE mark "is clearly understood as a reference to an individual with the first name KATE and the last name SPADE." Applicants argued that in their marks "the common English meaning of THE SPADES standing alone eclipses its obscure status as a surname." With regard to PATIO BY THE SPADES, Applicants argued similarly that this mark would be seen as referring to the dictionary meaning of "patio" and "spades."

Opposer argued that the real (now deceased) Kate Spade and her husband, Andy Spade (founders of opposer and owners of applicants), were "often referred to as 'the Spades.'" Some submissions by Applicants "further support this public perception of 'THE SPADES' as referring to the couple who are credited as the original creators of the KATE SPADE mark."

The Board found "little doubt that Applicants intended for the marks THE SPADES and PATIO BY THE SPADES to refer to two of its founders, who are publicly known as Andy and Kate Spade."

Overall, we find that in the context of the goods at issue in this proceeding, and taking into account the fame of the KATE SPADE mark, THE SPADES is most likely to be perceived by consumers as having the connotation and commercial impression of a mark identifying handbags, clothing, and fragrances offered by people known as “the Spades.” Similarly, PATIO BY THE SPADES is most likely to be perceived by consumers as having the connotation and commercial impression of goods offered by “the Spades,” and with, as Mr. Arons notes, “an outdoor patio feeling.”

The Board came to the conclusion that "the dissimilarities in sight and sound are outweighed by strong similarities in connotation and commercial impression as to the terms SPADE/S, particularly given the renown of the KATE SPADE marks."

And so the Board found confusion likely and it sustained the oppositions

Read comments and post your comment here.

TTABlog comment: What does the applicants' intent have to do with public perception or likely confusion?

Text Copyright John L. Welch 2020.