Thursday, April 28, 2022

Despite Strength of Kate Spade Marks, TTAB Dismisses Opposition to "WOLV & Spade Logo" for Watches

The Board dismissed Kate Spade LLC's opposition to registration of the mark WOLV & Design (shown below left) for watches, finding the mark to be too dissimilar to the KATE SPADE word mark and the "spade logo" mark (below right) to support opposer's Section 2(d) likelihood-of-confusion and its Section 43(c) dilution-by-blurring claims. Despite identical goods, presumably identical channels of trade and classes of consumers, and the high level of strength of opposer's marks, the Board deemed the first DuPont factor to be dispositive. Kate Spade LLC v. Wolv, Inc., Opposition No. 91241442 (April 27, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).

Kate Spade stumbled out of the gate by failing to get its dozens of pleaded registrations into evidence. The Board explained the several avenues by which an opposer may proffer its registrations, including by attaching status-and-title copies or current TSDR information to the original pleading or to a notice of reliance, or by appropriate identification and introduction during the taking of testimony. Kate Spade did not take advantage of any of those methods, and it therefore had to rely on its pleaded common law rights in the KATE SPADE and "spade design" marks.

Likelihood of Confusion: Applicant Wolv, Inc. did not submit testimony or evidence, nor did it file a brief. Kate Spade submitted a pile of evidence regarding use of its marks. The Board found those marks to be arbitrary and inherently strong, and commercially "very strong . . . along the spectrum of from very weak to very strong." Therefore, the marks were entitled to a broad scope of protection.

Considering the marks in their entireties, the Board found them to be more dissimilar than similar. It not surprisingly deemed the word WOLV to be the dominant element of applicant's mark.

We would run afoul of the principle that we compare the marks in their entireties were we to ignore the word “Wolv.” Even though the design elements of both marks are spade designs, the visual distinctions between the designs along with Applicant’s addition of the word “Wolv” create visually dissimilar marks that engender different commercial impressions.

The Board concluded that the marks are so dissimilar in their entireties that confusion is not likely, and so it dismissed Kate Spade's Section 2(d) claim.

Dilution-By-Blurring: With respect to the dilution-by-blurring claim, the Board found the mark KATE SPADE to be famous, but "the renown of the spade logo is not so clear," because there was no basis in the evidence for disassociating the spade design from the KATE SPADE word mark. "We find Opposer failed to establish that its use of the spade design is as a symbol the public primarily associates as Opposer's famous mark such that it eclipses the common use of the spade design. *** In other words, Opposer has not proven its spade design is a "household symbol" such that when the public encounters Opposer's spade design in almost any context, the public associates the spade design, at least initially, with Opposer."

In any case, as to the involved marks, the same reasoning the Board used in the Section 2(d) context applied to the Section 43(c) analysis, and the Board concluded that "the dominance of the word 'WOLV' in Applicant's mark and the ornate spade design featuring a highly stylized letter 'W' are so different than Opposer's KATE SPADE mark that consumers viewing Applicant's mark will not call to mind or conjure up Opposer's KATE SPADE mark."

Bona Fide Intent: Kate Spade argued that Applicant Wolv lacked "firm and demonstrable plans to use the the SPADE Wolv Mark at the time it filed the application" four years earlier. However, the Board found that applicant's testimony "tells another story." Applicant's principal decided to start a watch company because he is a "watch enthusiast." He took various steps to bring his company to fruition, having a design make sketches for various watch parts, using the mark at issue as a "thumbnail" on social media, making a sample box, straps, business cards, and the like, and preparing a basic breakdown of the money he would need. He also created a prototype specimen and various renderings of watches and parts. 

Applicant created these documents between November 2016 and November 2017. He ceased his preparations when Kate Spade filed its opposition, "a sufficient reason to overcome any inference that Applicant did not have a bona fide intent to use the mark at the time it filed its application."

When we consider Hsu’s testimony and all the documents introduced in his discovery deposition in its entirety, we find Applicant had a bona fide intent to use the mark in commerce as of the filing date of the application. We assume arguendo that Applicant’s business plan standing alone lacks sufficient detail to demonstrate a bona fide intent to introduce watches into the market. The business plan, however, is not the only document going to the question of Applicant’s bona fide intent. 

And so, the Board dismissed the lack-of-bona-fide intent claim.

Read comments and post your comment here.

TTABlogger comment: As I've said before, you can learn a lot from a Judge Bergsman opinion. This case reminds me of the recent defeat suffered by Monster Energy [TTABlogged here].

Text Copyright John L. Welch 2022.


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