Summary Judgment Motion Backfires: C.D. Cal. Dismisses Kate Spade Appeal of TTAB Opposition Defeat
Kate Spade moved for summary judgment in its Section 1071 civil action for review of the Board's decision dismissing its opposition to registration of the mark WOLV & Design (shown below left) for watches. The Board found the mark to be too dissimilar to the KATE SPADE word mark and the "spade logo" mark to support Kate Spade's Section 2(d) likelihood-of-confusion and Section 43(c) dilution-by-blurring claims. [TTABlogged here]. The U.S. District Court for the Central District of California not only denied Kate Spade's motion for summary judgment but affirmed the Board's decision. Kate Spade LLC. v. WOLV INC., Civil Action No. CV 22-4392 FMO (SSCx) (C.D. Cal. March 25, 2024).
Kate Spade sought review of only its Section 2(d) claim, alleging likelihood of confusion with its marks for, inter alia, jewelry and watches. The court focused on the two marks shown above right. Defendant WOLV INC did not contest the allegations that the goods are identical and travel in the same trade channels.
Kate Spade asserted that its marks are famous, but the court found its evidence of fame with respect to watches to be inadequate.[A]lthough evidence of a mark’s general fame for unrelated product categories may be relevant, the weight of such evidence is greater where plaintiff establishes some nexus between the products for which a mark is famous and the product types at issue. Here, plaintiff makes no such argument . . . and thus the court gives little weight to its general evidence of fame.
The court then concluded that Kate Spade's marks are "weakly famous with respect to the product type."
Turning to a comparison of the marks, the court observed that when "marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines." "Also, because the Spade Marks are arbitrary and weakly famous, the degree of similarity needed for a likelihood of confusion finding is further reduced."
Contrary to Kate Spade's contention, the court found the word WOLV to be the dominant element in defendant's mark: "in light of the fallibility of memory ... the average consumer would recall the word WOLV and not the stylized design element." It concluded that "the dissimilarity of the Wolv Mark's word element greatly outweighs any structural similarity."
There was no dispute that the involved marks differ as to sound. Moreover, there is "little similarity of connotation."
The court was "persuaded that the marks are so dissimilar that no 'persons who encounter the marks would be likely to assume a connection between the parties.'"
And so, the court denied Kate Spade's motion for summary judgment. Furthermore, "[t]he TTAB’s findings that the subject marks are so dissimilar in their entireties that there is no likelihood of confusion are affirmed. Plaintiff’s § 2(d) likelihood of confusion claim is hereby dismissed."
Read comments and post your comment here.
TTABlogger comment: The harder they are, the bigger they fall.
Text Copyright John L. Welch 2024.
posted by John L. Welch @ 4/03/2024
5 comments
5 Comments:
I took a quick look at the evidence in the TTAB case and it clearly shows that watches and handbags and clothing are being sold by Kate Spade under the mark. The TTAB did not reach the same conclusion on the "commercial strength" of the mark on watches or the "related" goods. Is the District Court's conclusion on the "commercial strength" of Kate Spade's mark on watches flawed? Does one have to specifically "argue" that the goods are related or is simply demonstrating via evidence that the goods are sold together and under the same mark sufficient? The reliance on Trek seems to be a little misguided here. One of the elements of demonstrating commercial strength is the use of the mark on a variety of different goods. Thoughts?
There was no question that the goods are related - indeed overlapping. The court considered KS's evidence of fame and strength, and it said that in light of those facts, a lesser degree of similarity was needed to find likely confusion. The marks just weren't similar enough. PS: of course, this is basically a trial "de novo" so the court could make its own findings as to strength.
Sorry John, but I am not certain that your general assessment here is a correct interpretation of the Court's finding on the specific issue of "fame" or as I prefer to call it "commercial strength" in conection with watches. The quote below is taken directly from your write-up. This language bothers me. The Court "appears" to state that Kate Spade is "famous" for -- we assume its handbags and clothing -- albeit, not specifically stated in the opinion. In fact, the opinion is silent on what "product category(ies)" with which the Court is finding the mark to be commercially strong. The Court is saying that Kate Sapde did not "make a nexus" between watches and and the "product types for which the mark is famous." This goes directly to the question of relatedness between watches, handbags and clothing and whether the "commercial strength" of the mark on these related goods should be given the same degree of protection. If the mark is "highly famous" for the other product categories, namely, handbags and clothing, why not for watches, when it is clearly shown they are sold under the same mark, travel in the same channels of trade, etc.?
'Kate Spade asserted that its marks are famous, but the court found its evidence of fame with respect to watches to be inadequate.
[A]lthough evidence of a mark’s general fame for unrelated product categories may be relevant, the weight of such evidence is greater where plaintiff establishes some nexus between the products for which a mark is famous and the product types at issue. Here, plaintiff makes no such argument . . . and thus the court gives little weight to its general evidence of fame.
The court then concluded that Kate Spade's marks are "weakly famous with respect to the product type."'
Thanks for the comment. BTW: the use of the word "fame" in this context comes, I believe, from the use of that word instead of "strength" in duPont for the fifth factor "the fame of the prior mark."
PS: I'm not convinced that a mark that is "famous" or strong as to one type of goods is therefore automatically strong as to any other type of goods that may be found, under the low standard current enforced, to be "related."
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