TTABlog Test: Are These Two Bird Design Marks Confusingly Similar for Clothing?

In this battle of the birds, frequent TTAB plaintiff Abercrombie & Fitch opposed an application to register the mark shown below left, for various clothing items, claiming a likelihood of confusion with its registered design mark shown below right, for overlapping clothing items. Since there were no limitations in the application or pleaded registrations as to channels of trade and classes of consumers, the Board presumed that the goods travel in the same, normal channels to the same consumer classes. So it all boiled down to the marks. How do you think this case out? Abercrombie & Fitch Trading Co. v. Srinivasa Rao Gubbala, Opposition No. 91255288 (December 8, 2023) [not precedential] (Opinion by Judge Wendy Boldt Cohen).

Applicant Gubbala described its mark as a black and white bird with outspread wings, with an orange beak and a blue eye, holding a black fish in its mouth. A&F said its mark is a bird silhouette, without any claim to color.

Gubbala attempted to distinguish the goods by arguing that A&F does not "focus on sportswear, instead focusing on casual fashion and accessories, which differs [from A]pplicant’s future products which will focus on sportswear," and further that A&F's goods are sold in its own stores. The Board shot down those arguments, since there are no such limitations in the opposed application or the pleaded registrations.

[B]oth parties’ consumers must be deemed to encompass the general purchasing public, including teenagers who purchase Opposer’s clothing items. The Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1640 (TTAB 2007). In addition, because the identifications contain no limitations as to price points, we must presume that the parties’ goods encompass relatively inexpensive goods, which would be the subject of impulse purchases.

The Board noted once again that, since the goods overlap, a lesser degree of similarity between the marks is needed to support A&F's Section 2(d) claim. [Does this make sense? - ed.]

Turning to the strength of the cited mark, the Board concluded, based on a number of third-party marks that include a bird design, that "a bird design, in general, is not unique for clothing items." But there was no evidence of the use of, and little evidence of the registration of, a design similar to the A&F's design.

As to commercial strength, A&F's promotion of its products bearing the bird design have been "substantial." A&F also submitted evidence of the promotion of its bird mark through "partnerships with various organizations that work with high school students … reaching millions of students and educators." There was also evidence of unsolicited media coverage, including articles in Business Insider and on Yahoo Finance. The Board concluded that A&F's bird mark is "at the very least, commercially strong entitling it to a broad scope of protection against confusingly similar marks."

Turning to the marks, the Board observed that "the proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties."

Applicant Guballa argued that its mark "consists of specific design elements and coloring that are unique to the gannet bird. This is very intentional … Applicant is not trying to emulate Opposer’s seagull, nor would Opposer’s seagull mark be mistaken for a gannet. These are marks that have extreme differences."  The Board was not impressed:

Applicant’s argument ignores that the parties’ marks both show a similar bird with two outstretched wings and in flight with pointed, closed beaks facing to the left. *** Although Applicant’s bird has a fish in its beak, the fish is very small in comparison to the remainder of the bird design and despite Applicant’s arguments to the contrary, likely not readily discerned and remembered by the consumer.

Looking at the parties’ marks in their entireties, the parties’ marks have a similar appearance and commercial impression of a bird in flight and the subtle differences (such as the wingtips) are not likely to be recalled by consumers at spaced intervals, given that the average purchaser normally retains a general rather than a specific impression of trademarks.

And so, concluding that confusion is likely, the Board sustained the opposition.

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TTABlogger comment: What do you think? Hard to swallow? BTW: I don't recall ever seeing A&F's bird design mark, but then I'm not in high school.

Text Copyright John L. Welch 2023.