The USPTO refused to register the mark shown below left, for "Back packs; fanny packs; tote bags" and for "“Clothing, namely, aprons, t-shirts, sweatshirts, and hats," finding confusion likely with the registered mark shown below right, for, inter alia, backpacks and t-shirts. The goods are in-part identical and those goods presumably travel in the same trade channels to the same classes of consumers. But what about the marks? How do you think this appeal came out? In re Damselfly Global LLC, Serial No. 97669661 (September 23, 2024) [not precedential] (Opinion by Judge Mark Lebow).
The Board began with a consideration of the strength of the cited mark, noting that in an ex parte appeal the strength of the cited mark “is normally treated as neutral because the record generally includes no evidence as to fame.” However, applicant itself provided some evidence that registrant’s mark is commercially strong.
Applicant argues . . . that “consumers are likely to pronounce [Registrant’s] I LOVE NY Marks [as I LOVE NEW YORK] because that’s how the extremely popular and widespread marketing campaign pronounces, and has always pronounced, the I LOVE NY Marks.” Applicant thus affirmatively acknowledges an “extremely popular and widespread marketing campaign” supporting the cited mark.
As to the inherent strength of the cited mark, applicant provided third-party registration evidence that suggested that "the “I ♥” format is often registered, but with additional elements that were considered to have distinguished them overall." However, there was no evidence regarding use of those marks.
In sum, we find that the frequent registration of marks containing an “I ♥” format shows that these sorts of affinity marks are somewhat weak conceptually, and that Registrant’s particular mark reflecting affinity with New York thus has some commercial weakness. *** We also account for Applicant’s acknowledgement that Registrant’s mark has some commercial strength.
Turning to the marks, the Board found no dominant element in either mark. "They are both unitary in nature, conveying a single and distinct commercial impression that is distinct from the constituent words “I” and “NY” that they contain."
The Board acknowledged that there may be some difference in sound, but "given the structure and contents of the mark, and the fact that flowers are often associated with love, pronouncing the mark as 'I LOVE NEW YORK' is at least as reasonable as pronouncing it as 'I FLOWER NEW YORK' or 'I ROSE NEW YORK.'" [FWIW: I think I would pronounce it as I LOVE FLOWERS IN NEW YORK - ed.]
The Board found the connotations and commercial impressions of the marks to be similar in that they are "presented in the same structure and use a design element to convey a message about affinity with New York. Just as Registrant depicts the heart in different colors to add to the message, the flower could be seen as an extension of the message, or simply a variant of Registrant’s mark."
The Board concluded that, "notwithstanding the small visual differences resulting from the substitution of a flower design for a heart design, the overall appearance, sound, connotation and commercial impression of the marks are far more similar than dissimilar."
And so, the Board affirmed the refusal.
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TTABlogger comment: What if the you replaced the flower design with the N.Y. Mets logo?
Text Copyright John L. Welch 2024.
"small visual differences"? I would have thought not.
ReplyDelete"[I]f the you replaced the flower design with the N.Y. Mets logo"...then you could have a twofer. Two grounds for a 2(d) refusal instead of one. :-)
ReplyDeleteIf I LOVE NY is not protectable, then are we not simply comparing the heart to a flower?
ReplyDeleteHow are these confusing, except for the part that is not capable of being a mark?
Flowers are also associated with death. The only reason anyone would pronounce applicant's mark as I LOVE NEW YORK is because of the cited mark's fame, which seems to be what this decision is based on, even if the Board didn't admit it.
ReplyDeleteHow does the I ♥ NY hold up as a mark at all?
ReplyDeleteThe Board had found in the I ♥ DC case:
"[W]e find that I ♥ DC, in the two stylized formats set forth in the Application and Registration, fails to function as a trademark for Respondent’s goods."
"Because the nature of the phrase will be perceived as informational, and also because the ubiquity of the phrase I ♥ DC on apparel and other souvenirs of many makers has given it a significance as an expression of enthusiasm, it does not create the commercial impression of a source indicator, even when displayed on a hangtag or label."