What happens when you want to register a word mark, and someone else has an existing trademark for a stylized mark containing similar words? Are you in the clear because they have a large logo in their mark that you do not use? That is the case examined by the Trademark Trial and Appeal Board (the “Board”) in In re Crazy Dog T-shirts, Inc.
Trademarks are commonly thought of as either having (1) a standard character format called a word mark (plain words, letters, and/or numbers); or (2) a stylized or design format called a design mark (words, letters, and/or numbers with a specific font, color, design, and/or graphics). An example is the difference between BMW and . The scope of protection for a word mark (BMW) is considered broader as the mark entitles you to use and protect the mark in any font style, size, or color.
Crazy Dog T-Shirts, Inc. sought to register the word mark CRAZY DOG TSHIRTS (with the term TSHIRTS disclaimed) for on-line retail store services featuring graphic t-shirts, hoodies and decals. In examining whether to grant a trademark, the Board considered whether the word mark was likely to cause confusion with the existing registered mark for articles of clothing for men, women and children, namely t-shirts, sweatshirts, cap and outerwear, namely jackets and wind-resistant jackets.
In a likelihood of confusion analysis, the test is a comparison of the marks in their entireties as to appearance, sound, connotation and commercial impression. The examination is not a side-by-side comparison, but rather whether the overall commercial impressions are so similar that confusion as to the source of the goods is likely to result.
For the requested mark CRAZY DOG TSHIRTS, the Board found that CRAZY DOG is the dominant portion of the mark because TSHIRTS is generic and also disclaimed. The Board found that consumers are not likely to rely on disclaimed generic words for source identification.
Despite the large dog design in the registered mark, the Board found that the CRAZY DOG wording dominates the registered mark. In making its determination, the Board discounted the presence of the dog design for several reasons. First, quoting from previous Federal Circuit decisions, the Board found that “the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.” Second, the Board stated that greater weight is given to the wording because it is the wording that purchasers would use to refer to or request the goods or services. Third, the Board found that while the registered mark has a “significant design element,” the design reinforces the wording in the mark because it is a depiction of a “crazy dog” wearing sunglasses.
Accordingly, the Board found that the marks have similar a commercial impression. The Board further found that the goods and channels of trade also weighed in favor of likely confusion, and refused trademark registration of the applicant’s mark CRAZY DOG TSHIRTS.
This case highlights the importance of not overlooking existing design marks when choosing your word mark. You might be tempted to assume that your new mark should sail through registration because the prior mark includes a large logo you don’t use. But the Board’s decision indicates that it may focus on the text portion of the prior mark (and not the logo), particularly where the text is similar and the marks are for related goods.
The proceeding is Serial No. 86230096 (April 4, 2016).