CAFC Affirms TTAB: "BLUE INDUSTRY" Not Confusable with, or Dilutive of, "INDUSTRY" for Clothing

In a nonprecedential disposition, the CAFC affirmed the TTAB's dismissal of an opposition to registration of the mark BLUE INDUSTRY for various clothing items, finding no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 (P&S) for clothing and related retail store services. [TTABlogged here]. The court found that the Board’s factual findings were supported by substantial evidence and that the Board correctly concluded there was no likelihood of confusion or dilution. Pure & Simple Concepts, Inc. v. I H W Management Limited DBA The Finchley Group, Appeal No. 2020-1211 (May 24, 2021) [not precedential].

P&S contended that the Board erred by failing to consider "the marketplace impression of the marks at issue upon likely consumers," claiming that the goods are inexpensive and may be bought on impulse. The court, however, noted that P&S failed to raise that issue on appeal and therefore had waived it.

Next, P&S maintained that the Board erred in finding “BLUE” to be the dominant term in Finchley’s mark. The court, however, concluded that "the Board’s finding that BLUE was the lead term in Finchley’s mark and its finding that BLUE 'is most likely to be impressed upon the mind of the purchaser and remembered'" was supported by substantial evidence and was not otherwise contrary to law.

P&S also argued that the Board erred by relying too heavily on third-party registrations without considering actual use of the marks, their continuing validity, or their commercial impression. The court, however, found that "the number of registered 'industry' marks [74], combined with the specific examples of advertised use [12] that were considered by the Board, are substantial evidence indicating that the sixth DuPont factor weighs in favor of Finchley."

Turning to P&S's dilution claim, the court agreed with the Board that the evidence "fell far short of proving that P&S’s marks are famous especially because 'there is no evidence that any of P&S’s marks have risen to the level of consumer recognition as a household name.'"

And so, the CAFC affirmed the Board's dismissal of the opposition.

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TTABlogger comment: Finchley's industry in gathering evidence of third-party use and registration paid off.

Text Copyright John L. Welch 2021.