Evidence of Actual Confusion can be a One Way Street

The Applicant filed for the following trademark for clothing: The application was denied based on a cited registration, also for clothing, for: Not surprisingly, the TTAB found both marks essentially equivalent to “MOUNTAIN LIFE.”  The design elements were given little weight with the word portions deemed dominant for the purpose of likelihood of confusion. This …

Company brings a skateboard to a knife fight and wins big.

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. …

Fabric from which clothes are made can be related to actual clothing items for the likelihood of confusion analysis.

The Applicant filed for MARSHLAND for FABRIC sold as an integral component of finished clothing items. The TTAB refused registration based on MARSHLANDER for rain coats and other rain resistant clothing items. This decision confirms that a unique relationship exists in the clothing industry between goods used in making a product and the product itself. …

In a “crowded” field for a specific term, usually the addition of a unique term will be sufficient to secure a trademark registration.

Applicant applied to register SNOW BY REPUBLIC for clothing.  The TTAB approved the registration this mark despite the existence of the following trademark registration for similar clothing items: SNÖ In reaching its decision, the TTAB discusses two interesting tenets of trademark law. FIRST.  A “crowded” field is often used to describe a situation where a …

A trademark that falsely suggests products are made of a specific type of material when they are not, can still be trademarked.

Applicant applied to register HYDZ for “apparel not made of…animal hides, namely, sweatpants and sweatshirts for casual wear or for wear during exercise.” The TTAB over turned the Examiner’s refusal and allowed the trademark to be registered. This cases touches on two interesting and related technical trademark issues. FIRST: Descriptive marks cannot be registered without …

Trademarks with multiple definitions, one of which overlaps with an existing trademark registration can be problematic.

Applicant applied to register TECHWOOL for socks made of wool. The TTAB denied registration claiming Applicant’s mark was likely to be confused with an existing trademark registration for TECHNOWOOL for jackets made of wool. This case touches on two fundamental trademark concepts. FIRST: Most of the time, the TTAB will find that one specific clothing/headgear/footwear …

Don’t Attempt to Trademark Geographic Locations Where Your Products Are Not Made

Applicant tried to register VENEZIA-MILANO for women’s and men’s clothing products. The TTAB denied registration while discussing three interesting trademark fundamentals. FIRST: Any time an Applicant files for a trademark containing non-English words, the foreign terms are translated into English. In this case, the Italian words VENEZIA-MILANO were converted into the English equivalent “Venice-Milan” before …

Don’t Go For Common Phrases. They can be difficult and expensive to obtain.

Applicant filed for the mark ONCE A MARINE, ALWAYS A MARINE for a variety of clothing items.  The mark was refused because the TTAB has taken the position that “common phrases” do not function as trademarks and should be available for use by everyone. The TTAB also held that the primary function of the phrase …