Monday, June 15, 2020

IBKÜL Confusable with KÜHL for Clothing, Says TTAB

[This guest post was authored by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. IBKUL UBHOT Ltd. sought to register the mark IBKÜL, in the stylized format shown below, for clothing and activewear, “namely, vests, jackets, shirts, tops, bottoms, hats, headbands.”

Opposer Alfwear, Inc. owns registrations for the marks KÜHL, KUHL, and KUUL for clothing and other items, but the parties and the Board focused on the KÜHL mark and registrations in the Section 2(d) analysis. After coolly marching through the DuPont factors, the Board found the opposed mark likely to cause confusion with the KÜHL mark, and it sustained the opposition. Alfwear, Inc. v. IBKUL UBHOT Ltd., Opposition No. 91233985 (June 2, 2020) (not precedential) (Opinion by Judge Cindy B. Greenbaum).

Section 2(d) Likelihood of Confusion: Somewhat interestingly, the Board started its likelihood of confusion analysis with the goods identified in the registration and application, instead of an analysis of the marks themselves. Here, both the application and registration included bottoms, hats, jackets, shirts, and tops, so it did not take much for the Board to find the goods to be legally identical. From this, the Board also “presume[d] that the channels of trade and classes of purchasers for these goods are the same.”

Applicant also put forth an alternative Section 18 amendment, attempting to limit its recited goods to “specialty activewear for golf, tennis and English riding equestrian sports, namely shirts, tops, bottoms and headbands.” But the Board iced that argument, finding that “the resulting narrower identification of goods would still be subsumed by, and thus legally identical to, the broadly worded identification of goods in the registration.” In short, applicant’s attempt to narrow its own identification of goods would not accomplish anything if opposer did not also restrict its broad listing of goods.

One of the more intriguing DuPont factors the Board considered was the strength of the KÜHL mark. Opposer claimed its mark was “famous” for purposes of likelihood of confusion and dilution, so the Board waded through all of the Opposer’s evidence on this point. First, however, the Board had to determine the inherent strength of the KÜHL mark (as a mark registered without a showing of acquired distinctiveness, it is entitled to a presumption of inherent distinctiveness).

Although the Board reiterated the canon that there “is no correct pronunciation of a mark that is not a recognized word,” it accepted the “uncontradicted” testimony that the mark KÜHL is pronounced as “cool.” [Author’s note: Given John Welch’s pronunciation of mark FUCT, I would love to hear his different pronunciation of KÜHL.] After determining that “cool” can have several meanings, including “used to express approval, admiration, etc.,” the Board found opposer's mark to be suggestive. So the KÜHL mark is inherently distinctive, but “not a conceptually strong mark.”

The Board then went through pages and pages of evidence allegedly showing that the KÜHL mark is “famous.” The Board, however, for one reason or another, discounted most of this evidence: among other things, the sales figures were not presented year by year, broken out by product type, or provided with any market context; the website visit figures did “not indicate whether the number of user visits were from different individuals or multiple visits from the same individuals, or from individuals residing in countries other than the U.S.”; and, the articles opposer produced all came from “Utah-based publications as opposed to national publications.” The Board finally determined:
"[C]onsidered as a whole, Opposer’s evidence establishes that the KÜHL trademark for clothing has achieved moderate commercial strength, but the evidence falls short of clearly establishing that the mark is famous."

The last factor the Board analyzed was the similarity of the marks. The Board found aural similarities because the opposed mark would likely be pronounced “I” “be” “cool,” with Opposer’s mark pronounced “cool.” Visually, the Board also found similarities:

The marks are similar in appearance because they share the letters “K,” “Ü” (with an umlaut) and “L,” in the same order. While Applicant’s mark begins with the letters “IB,” the term “KÜL” stands out as the most prominent portion of the mark because it appears in the color blue, and because it includes an umlaut over the letter “u,”which is not used in the ordinary English language.

Conclusion:In the end, given its finding that the KÜHL mark is not famous, the Board did not address opposer’s dilution claim, but the Board sustained the opposition under Section 2(d).

Read comments and post your comment here.

TTABlogger comment: I pronounce KÜHL as "key-yule." JLW

Text Copyright John L. Welch 2020.


At 12:05 PM, Blogger Miriam Richter, Esq. said...

I don't think I'm alone in pronouncing it ib-cul not I B Cool! I'm not up on the proper pronunciation of diacritical marks and I doubt the consuming public is either!


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