A recent Trademark Trial and Appeal Board (“Board”) decision from last week emphasizes the detailed analysis required when comparing a composite mark (in this case words and a design) to a design mark. Here, the applicant, the University of Houston System (“Applicant”) is seeking to register a mark, UHCL Hawks and a design of a flying hawk (view here) for various goods in international classes 16, 21, 25, and 41. Retail Royalty Company (“Opposer”) filed a Notice of Opposition based on the ground of likelihood of confusion based on its ownership of U.S. Registration 3878197 (hereinafter “Flying Eagle Mark”) a design image of a flying eagle (view here). Opposer’s Flying Eagle Mark is registered for various goods in class 3 (creams and perfumes etc.), 18 (handbags and wallets etc.), 25 (various apparel), and 35 (retail store services featuring clothing, sunglasses, jewelry etc.). Opposer claims rights in prior registered marks for AMERICAN EAGLE OUTFITTERS and “AMERICAN EAGLE family of marks” for a broad range of lifestyle products.
Opposer did not directly argue that its mark was “famous”, but did argue the Flying Eagle Mark was “strong and entitled to broad protection”. Opposer also stated that its mark has been used in widespread and extensive advertising and the company maintains strong sales in relationship to the branded goods. These statements were supported by substantial evidence. The net U.S. sales for the years 2010-2015 were over $3 Billion. However, the evidence showed that Opposer’s Flying Eagle Mark does not have a strong commercial presence or consumer recognition except with retail clothing goods and services.
Conversely, Applicant argued that the Flying Eagle Mark was not strong, but instead was dramatically diluted by the existence of numerous third party bird design marks for general retail including clothing. Applicant argued that purchasers have become conditioned to numerous bird marks in the marketplace and are capable of distinguishig the sources by small differences in the marks. Among the co-existing marks are bird designs of Hollister (owned by Abercrombie and Fitch) and Eddie Bauer. The Board reviewed numerous bird design marks submitted by the Applicant (120 were submitted) and referenced twelve in the decision stating,” we find the following as bearing the closest resemblance to Opposer’s (or Applicant’s) bird logo.” And of the twelve only a few were identified as bearing a strong resemblance. The Board stated that to assess the strength of the mark, they evaluate the inherent strength based on the trademark alone and also the commercial strength based on marketplace recognition by consumers.
It is important to note that third party registrations are not evidence of actual use of the mark. We have reiterated this before. but it is significant enough to include once more, third party registrations may be evidence that a mark is weak and entitled to a narrow scope of protection. However, current third party use must also be shown. This can be accomplished through submission of website print outs showing actual use of similar marks. In the case at bar, website print outs were submitted, but none of the marks in actual use were deemed significantly similar. This could be what distinguishes this case from the two cases cited in support by the applicant, Juice Generation, Inc. v. GS Enterprises LLC, 115 USPQ2d 1671 (Fed. Cir. 2015) [precedential];Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 116 USPQ2d 1129 (Fed. Cir. 2015) [precendential]. In those two cases the actual use cases cited were 26 and 14 respectively while in the case at bar, the Board noted that none of the actual use marks cited were significantly similar. The Board concluded the Flying Eagle Mark was not weak. Therefore, it would not receive a narrow scope of protection.
Regarding the similarities between the marks. The Board focused on the fact that the Applicant uses the bird design mark with words, UHLC HAWKS. This changes the commercial impression and imparts a meaning that is not present in the Opposer’s mark. The Board concluded that the mark’s were more dissimilar than similar, but indicated that the marks were not so different that confusion could be avoided under all circumstances.
To assess the relatedness of the goods, confusion may be likely for each class of goods and services in the application based on any item that comes listed in that class. The question to ask is, typically does a single entity provide both parties’ goods or services. The record did not contain evidence that one source commonly sells the goods in classes 16, 21, & 41 and goods in class 25. In the end, the Board concluded that although the marks were more dissimilar than similar, Applicant could not register the goods in class 25 as they were overlapping as to the goods listed in Opposer’s registration for apparel and retail services featuring apparel. The applicant could register the remaining goods and services in classes 16, 21 & 41. When comparing composite marks and design marks, greater weight can be given to the dominant feature for purposes of determining likelihood of confusion. If you have questions concerning possible confusion between two trademarks and their sources, please contact us for a courtesy consultation.