That was the question the Trademark Trial and Appeal Board (the “Board”) sought to answer in the application proceedings of In re Don Calder. In this case, the trademark applicant sought to register the mark CALIFORNIA REPUBLIC (with CALIFORNIA disclaimed) for various clothing goods, including shoes, pants, jeans, shorts, hats, jackets, and belts in International trademark Class 25.
The initial examining trademark attorney refused to register the mark on the grounds that there was a likelihood of confusion with an existing registered design incorporating the words “REPUBLIK OF KALIFORNIA.” The existing mark featured the design of a bear holding a surf board above the text REPUBLIK OF KALIFORNIA. Similar to the applied for mark, the existing registered mark was also directed to clothing in International trademark Class 25, including hats, jackets, pants, sandals, shoes, shorts, and uppers for Japanese style sandals.
The trademark applicant appealed the denial of trademark registration to the Board, which reviewed the examining trademark attorney’s allegation of an existence of a likelihood of confusion between the two relevant marks under the often-discussed du Pont factors. This decision is noteworthy because the Board ultimately held that only a single factor was dispositive in this case.
Relatedness of the Goods, Channels of Trade, and Classes of Purchasers
The Board began by examining the relatedness of the goods, and found that the goods are identical-in part for hats, jackets, pants, shoes, and shorts. As such, the channels of trade and classes of purchasers were also considered to be the same. This weighed in favor of a finding of a likelihood of confusion between the two marks.
Similarities and Dissimilarities Between the Marks
The Board next analyzed the similarities and dissimilarities between the marks, noting that when the relevant marks appear on virtually identical goods, the degree of similarity necessary to support a finding of likelihood of confusion decreases. The Board also agreed with the examining attorney that the text components of the marks were pronounced the same.
Nevertheless, the Board found that the applicant’s mark was so different from the registered mark that confusion was unlikely.
The Board noted that in a typical composite mark bearing design and word elements, the text is often considered dominant. However, here, due to the large size of the bear design element relative to the text, the design was found to be “by far the most visually significant part of the mark,” which was not present in the applicant’s mark.
The Board further found that although the text sounds the same, the use of the letter “K” as a substitute for the letter “C” in the words “Republic” and “California” creates a different appearance and connotation. The Board found that the design and wording together create the overall commercial impression that “calls to mind state of the former Soviet Union, while Applicant’s mark does not.”
The Board also found that in the context of articles of clothing—which are likely to be encountered in retail settings on hang tags or neck labels—“the visual impression of the marks is likely to be more important.”
The Board thus found that the differences between the marks outweigh the other likelihood of confusion factors. The Board reversed the examining attorney, allowing registration of the mark.
As mentioned above, this is one of the rare times the Board found the word portion of a composite mark to be subservient to the design portion of the mark.
The proceeding is Serial No. 85143799 (January 29, 2015).