Applicant applied for the following mark incorporating the stylized letters “DF”:
for a variety of clothing items. The application was refused registration because of the existence of United States Trademark Registration No. 2827030 for the word mark DF, also for a variety of clothing items, with some overlap with the refused application. The TTAB affirmed the refusal.
Once again, the TTAB reminds Applicants that a word mark (i.e., in this case DF) covers all stylizations of that same mark. In this case, the TTAB heled that the cited DF registration expressly covered the stylized “df” in Applicant’s application…even if the “df” portion was slightly camouflaged by additional design elements.
In regard to the similarity of goods, this case is a good example of the genus-species rule. The cited registration included “tops” and the application listed “shirts” and “sweaters.” The TTAB held that “shirts” and “sweaters” were inherently contained in the “tops” description listed in the registration. Therefore, the respective goods were identical-in-part.
Moreover, when the respective goods are identical OR identical-in-part (i.e., one of the Likelihood of Confusion factors), the TTAB will often presume that the channels of trade and the class of purchasers (i.e., two other Likelihood of Confusion factors) of these identical OR identical-in-part goods are the same, assuming no express restrictions. Therefore, it is possible to acquire 3 Likelihood of Confusion factors for the price of 1.
…and one evidentiary tip: The TTAB gave no consideration to the eight Third-Party Registrations submitted by the Applicant with its Reply Brief for the first time. The Exhibits were held to be untimely.
If the Applicant had wanted to submit additional evidence, the Applicant should have requested/filed a Request for Reconsideration and/or Remand. In response, the TTAB would have most likely sent the case back down to the Trademark Examiner for consideration of the additional evidence.
New evidence merely attached to one’s Appeal Reply Brief will almost certainly be struck.