FIRST PRACTICE POINTER: Company brings a skateboard to a knife fight and wins big. If you only sell clothing to a specialized group of consumers, keep your goods description as broad as possible.
Opposer, a skateboard company, owned trademark registrations for FALLEN and RISE WITH THE FALLEN, both for a variety of generic clothing items. Applicant filed for FALLEN ANGEL, also for a variety of clothing products.
Evidence introduced at trial clearly established that Opposer (i.e., a skateboard company) targeted its clothing products almost exclusively to the skateboard community; and that Applicant (i.e., a knife manufacturer) marketed clothes as promotional items in support of its primary business, knives.
However, the goods description in Opposer’s trademark registrations WERE NOT limited to its specialized skateboard market. Therefore, the TTAB assumed that the channels of trade for Opposer’s goods extended into all channels of trade, including the channel of trade for purchasers looking primarily for knives. Similarly, the TTAB assumed that the class of purchases for Opposer’s goods included all purchasers of clothes, even those interested in clothes only as an afterthought when purchasing knives.
What makes this dispute interesting is that a specialized group of consumers who exercise a high degree of care, when making a purchase, will ordinarily reduce the likelihood of confusion. However, in this case, because Opposer’s goods description made no mention of specialized products, the presumption adopted by the TTAB was that the class of purchasers for Opposer’s goods were ordinary purchasers looking for generic clothing products…and that the purchasers WOULD NOT exercise a great deal of care. This TTAB presumption increased the likelihood of confusion despite the reality of specialization in the marketplace.
In this case, these likelihood of confusion factors carried the day.
SECOND PRACTICE POINTER: Third-party evidence of use, by itself, is insufficient.
Applicant introduced Internet website evidence of third party uses of FALLEN SOULS and FALLEN HEROES and FALLEN DREAMS and FALLEN SOLDIER for clothes, and argued that the addition of any [WORD] to “fallen” was sufficient to avoid a likelihood of confusion with Opposer’s FALLEN and RISE WITH THE FALLEN trademarks.
However, Applicant did not submit any evidence of the actual extent of use of these detected trademarks. Therefore, while the TTAB recognized that the evidence proved the four different entities were using FALLEN-based trademarks to sell clothing on the Internet, the TTAB discounted the evidence claiming it was insufficient to show there was such an extensive use of FALLEN-based trademarks for clothing that consumers would look to other terms in those marks to distinguish them.
Author: Gary Nelson