Westchester Women's Bar Association

Design Marks and Likelihood of Confusion

A recent Trademark Trial and Appeal Board ("TTAB" or the "Board") decision provides insights to how the TTAB analyzes likelihood of confusion cases when design marks are involved. See Abercrombie & Fitch Trading Co. v. Isabella Elisabeth Shnittger, Oppostion No. 91218738 (August 12, 2019) [not precedential], where Abercrombie & Fitch Trading Co. ("A & F") claimed the applicant's mark would cause confusion with its moose design marks (See below A & F's two images to the right) used for various apparel items and retail clothing stores. A & F filed an opposition proceeding. The applicant used the Moose Design with the words Red Dear (see below, the applicant's image to the far left) for clothing goods as well, including but not limited to hats, sweatshirts, T-shirts, long sleeve shirts, jackets, shirts and socks. The applicant did not counterclaim to cancel any of A & F's pleaded registrations, thus priority was not at issue. See King Candy Co. v. Eunice King's Kitchen Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). For more on design marks, see the firm page entitled, Design Trademarks And How They Are Treated By Examining Attorneys.

Design Marks And Likelihood Of Confusion

In any likelihood of confusion analysis, this one being no different even though it includes design images, the two key considerations are the similarities between the marks and the similarities between the goods. A & F used the solid form (black) moose for retail clothing stores and for “clothing, namely, beach cover-ups, bras, camisoles, halter tops and night shirts”. A & F's other moose image was used for “clothing, namely, polo shirts, sweaters, t-shirts, shirts, knit tops …;” Therefore the goods in the applicant's identification are either identical to or closely related to the opposer's pleaded registrations. Thus, the goods are legally identical which allowed the Board to presume that the goods travel in the same trade channels and will have the same classes of purchasers. There was no evidence of similar trade channels and classes of consumers, but it was not necessary because the Board found the goods legally identical. Since the goods overlap, this reduces the degree of similarity needed between the marks to find a likelihood of confusion.

Next the Board considered the marks in their entireties for appearance, connotation and commercial impression. Applicant argued that individual features of the Moose Designs were different, including different antlers, different shaped heads, and that the animals faced different directions. This type of argument is flawed because the test for similarities is based on the average consumer's general and not specific recollection of the marks. The typical purchaser does not remember minor differences in the marks. For example, after viewing the mark, it's likely the average consumer will not recollect in which direction the moose was facing or if the moose's mouth was open or closed. It's more likely that the impression will be that there was a four-legged large animal, with antlers in a silhouette form. Moreover, case law holds that it is common with design marks that the average consumer will not recollect any details of the designs, but an overall general impression. See In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990); See also, In re United Service Distributors, Inc., 229 USPQ 237, 239 (TTAB 1986).

The Board then addressed the words in the applicant's mark, and although the general rule is that when words are used with a design, often the words will be the dominant element of the mark. However, here the words "Red Dear" are dwarfed by the moose design. The design is viewed in terms of size in relationship to the size and location of the words in the mark. Here, the words are below the design and are much smaller in size. Also, the term "dear" emphasizes the deer image, despite the different spelling utilized in the mark (since deer and dear are phonetic equivalents). The words, Red Dear simply highlight the design mark since some consumers may perceive the animal to be a deer. In other words, since the design is the dominant feature of the mark and the applicant's design is similar to the opposer's design, simply adding two words, much smaller in size than the design, will not prevent confusion. In the end, the Board held that although there were some differences between the marks, it was not enough to overcome the similarities. The Board refused registration of applicant's design mark. If you have questions regarding design marks or word marks, please feel free to contact the firm for a courtesy consultation.

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