TTABlog Test: Are These Two Alligator Designs Confusingly Similar for Clothing?
Lacoste Alligator S.A. opposed registration of the mark shown below left, claiming a likelihood of confusion with its registered mark shown below right, both for clothing. Opposer's sales, advertising, and media coverage led the Board to conclude that Lacoste's alligator design marks are "'renowned' in the clothing market, and, at the very least, commercially quite strong." But what about the marks? Aren't the very different? How do you think this came out? Lacoste Alligator S.A. v. Southern Smocked Company, LLC, Opposition No. 91244445 (August 25, 2021) [not precedential] (Opinion by Judge Michael B. Adlin).
The Board found the marks to be similar in their entireties as to appearance, sound, connotation and commercial impression. Both depict green, right-facing alligators. As to the wording in applicant's mark, "SMOCKED COMPANY" is descriptive and disclaimed and "SOUTHERN" is "quite suggestive" of geographic origin. "This makes the literal element of Applicant’s mark weak, and less important in our analysis." Moreover, the alligator design is larger that the wording in applicant's mark.
While the parties’ alligators have different facial expressions, and Opposer’s alligator has “dots” on its body while Applicant’s does not, the marks are similar enough that some of the many consumers familiar with Opposer’s strong and “iconic ” mark would be likely to assume that Applicant is somehow affiliated with Opposer, perhaps as its subsidiary or licensee, especially because both parties use green, right facing alligators in connection with identical goods.
The Board found that this case brought to mind a number of prior decision finding confusing likely between two designs, despite obvious differences in details.
And so, the Board sustained the opposition.
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TTABlogger comment: Do you really think anyone would be confused by these marks (in the real world)?
Text Copyright John L. Welch 2021.
posted by John L. Welch @ 9/02/2021
3 comments
3 Comments:
Yes, maybe. My first thought was that the applied-for mark might be mistaken for a kids' line of Lacoste. Their logo is so well-known, I am not sure anyone could have an alligator for clothing....
I would find the trademarks not to be confusing. The fame of the Lacoste trademark does have an effect in differentiating between the trademarks. The descriptive/allusive terms in the trademark as applied for are not to be completely disregarded. (I am speaking from an Australian point of view) The trademarks should be considered as a whole. The applied for trademark may be a poor imitation of the Lacoste trademark but it so poor an imitation as not to be confusingly similar.
John, a good case for discussion.
Bob
Absolutely I think they're confusingly similar in the real world... the alligator has almost the same exact pose as the Lacoste alligator. If I saw this in a store, even with the word mark, I would probably think it was a collaboration between Lacoste and some up-and-coming designer.
While the Board did not reach the issue of dilution, I also think this is a textbook example of dilution by blurring, even though the parties' products are competitive.
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