Tuesday, September 21, 2021

TTABlog Test: Is MICHELLE MAE for Wholesale Clothing Confusable With MICHELLE MAY NEW YORK for Jewelry?

The USPTO refused to register the proposed mark MICHELLE MAE for "clothing sold wholesale, namely, hoodies, kimonos, shirts, and vests," on the ground of likelihood of confusion with the registered mark MICHELLE MAY NEW YORK for "jewelry" (NEW YORK disclaimed). Applicant argued that the term "NEW YORK" distinguishes the marks, and that the classes of consumers do not overlap because applicant's clothing is sold at wholesale to sophisticated customers. How do you think this appeal came out? In re Ashley Lacer, Serial No. 88692683 (September 15, 2021) [not precedential] (Opinion by Judge Michael B. Adlin).

The Marks: Since the term "NEW YORK" is geographically descriptive, it is of less significance in the likelihood of confusion determination. Personal name marks are common in the fashion industry, often identifying designers. "Thus, clothing consumers exposed to Applicant’s mark may very well assume that the mark identifies a designer because the mark appears to be a personal name; this may be especially true of the 'wholesale' consumers exposed to Applicant’s mark, as they would likely have more exposure to and knowledge of the common use of personal names to identify fashion designers." 

Moreover, consumers could view applicant's mark as a shorthand version of registrant's mark, or conversely see registrant's mark as a version of applicant's mark that identifies where the goods are made. 

Thus the first DuPont factor weighs in favor of likelihood of confusion.

The Goods: Examining Attorney John S. Yard submitted website pages showing that clothing and jewelry are offered under the same marks and travel in the same trade channels: e.g., Chico's, Banana Republic, Ann Taylor, Kate Spade, Vera Wang, and Calvin Klein offer clothing and jewelry. Wholesalers OrangeShine, Fashion Bella, and Judson & Co. do likewise. Indeed, registrant sells both jewelry and clothing (including vests). "In short, the Examining Attorney’s third party use evidence establishes a relationship between the goods."

In addition, the Examining Attorney submitted more than 20 use-based third party registrations showing the same mark registered for clothing and jewelry. 

Applicant contended that the classes of consumers do not overlap because she sells at wholesale. The Board, however, pointed out that the cited registration is not restricted to retail sales. And the website evidence showed that wholesalers sell both clothing and jewelry under the same mark.

Finally there was no evidence supporting applicant's argument that her customers are "sophisticated" and "must be approved by applicant to place orders and such customers are only allowed to purchase items in bulk, which results in an expensive price." In any case, there is no price limitation in the application at issue, and the Board must base is decision on the "least sophisticated potential purchasers" for the goods, "which could encompass inexpensive wholesale shirts or hoodies, perhaps shirts or hoodies purchased by small souvenir shops or street vendors in relatively low 'bulk' quantities."

 Conclusion: Finding that he marks are similar, the goods are related, and the channels of trade and classes of consumers overlap," the Board affirmed the refusal to register. 

Read comments and post your comment here.  

TTABlogger comment: Is this a WYHA? When clearing a mark for clothing, do you check jewelry marks?

Text Copyright John L. Welch 2021.


At 7:00 AM, Anonymous Anonymous said...

Class 25 marks are the MOST difficult of any to clear. You have to search 3, 14, 18, and 35, and then you have to worry about EVERY OTHER class where a mark might have niche fame and thus draw a possible opposition, since every brand owner thinks they have rights to apparel (and other promotional goods, like pens, etc.).

At 9:22 AM, Anonymous Anonymous said...

You should also search Classes 9 (for sunglasses) and 24 (for bedding), since many designers (such as Calvin Klein, Donna Karan, and Ralph Lauren) have been operating in those fields for years.


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