The USPTO refused to register the mark FAMOUS FRIENDS for “shirts; t-shirts," concluding that confusion is likely with the registered mark FAMOUS FRIEND for “entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings." Despite applicant's argument that the addition of the plural “S” materially changes how consumers perceive its mark, the Board unsurprisingly found the marks to be confusingly similar. But what about the goods and services? Is clothing related to everything? In re Runnin’ Behind, Inc., Serial No. 97603035 (April 23, 2026) [not precedential] (Opinion by Judge Wendy B. Cohen).
Specimen issues: The examining attorney deemed the use of the mark to be merely ornamental in light of its size and placement on the t-shirt, and thus unregistrable. The Board pointed out that "[a]lthough '[i]t may have once been the practice in the clothing industry to limit logos to small sizes in discrete areas rather than to have them ‘emblazoned’ across a garment ... such is no longer the industry practice, or at least no longer the only one.'"
Applicant contended that FAMOUS FRIENDS is recognized as an indicator of secondary source for the goods because of the "extensive use of FAMOUS FRIENDS in connection with Chris Young’s song, album, tour, and fan club services, rendering it easily recognizable by consumers as Applicant’s distinctive brand extendable to souvenir merchandise (bearing his image).” The Board found the evidence convincing that the mark serves as an indicator of secondary source, and it reversed this refusal.
Section 2(d) Refusal: The Board found the difference between the singular form of the cited mark and the plural form of applicant's mark to be "not meaningful." "Any consumers who do notice the slight difference in the marks may consider Applicant’s mark a variation of the Cited Mark covering companion product lines."
Regarding connotation and commercial impression, applicant argued that its mark is associated with Chris Young, "but that even if the consumer is unaware of 'the verbal irony of Chris Young’s use of ‘Famous Friends’ for non-famous hometown heroes, the marks … create distinct commercial impression on their faces.'" The Board was unmoved:
We are constrained to base our analysis on the applied-for mark and identification of goods. While Applicant has submitted evidence of its use of FAMOUS FRIENDS in connection with Chris Young and his song, we cannot consider alleged marketplace realities not reflected in the identifications of goods and services.
The Board found that '[g]iven the near identical similarity of the marks, this first DuPont factor weighs strongly in favor of a finding of likelihood of confusion."
As to the goods and services, the examining attorney relied on twenty use-based third-party registrations covering t-shirts and entertainment services, including the marks AUSTIN CITY LIMITS, KELLY CLARKSON, and BARRY MANILOW, as well as on a number of internet uses, including RED HOT CHILI PEPPERS, PRINCE, and GEORGE CLINTON.
Applicant, in turn, submitted twenty-two pairs of registrations in which the identical mark was registered by different entities for songwriting or music production and for shirts and t-shirts. The Board was not impressed: "the fact that different third-parties may own these registrations does not negate those examples of common ownership submitted by the Examining Attorney and what that may suggest as to consumer perception in the marketplace."
The Board found that the second DuPont factor supported the refusal.
Noting that none of the DuPont factors favored applicant, the Board affirmed the Section 2(d) refusal.
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TTABlogger comment: Chris Young is not related to Neil Young, says Claude.
Text Copyright John L. Welch 2026.
Thor limitations?
ReplyDeleteTwo interesting issues here.
ReplyDeleteFirst, as to the specimen issues, placing a trademark on the front of a shirt has always resulted in an ornamental refusal. (Of course, the front of a hat was OK for some reason). For the Board to note on its own, with zero evidence, that it is no longer “the practice in the clothing industry to limit logos to small sizes in discrete areas” (was that ever the case?) is a BIG DEAL! This is non-precedential, but will they update 1202.03(a)?
Second, the 2(d) refusal was based on a Class 41 registration. To overcome the ornamental refusal Applicant argued the mark on the goods served a source-indicating function based on his own entertainment services. That worked, but may have put the nail in the coffin on the 2(d) issue. For all the money spent on this appeal, it would seem that argument would have been the one avoid.
"Is clothing related to everything?" Seems so -- at least that is what the TTAB's AI system seems to think or at a minimum, the decisions continue to move in this direction! This is good or bad depending on what side you are forced to argue.
ReplyDelete