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Can A Design Feature Be The Dominant Aspect Of A Mark?

In a recent case, The Trademark Trial and Appeal Board (the “Board” or “TTAB”) reversed a 2(d) refusal finding the applicant’s mark which contained words plus a design not to be similar enough to the registrant’s mark to cause a likelihood of confusion.  See In re Primeway International LLC, Serial No. 87059786 (January 9, 2019) [not precedential], where the applicant was seeking to register the mark INCOGNITO for footwear. The Examining Attorney determined that it caused a likelihood of confusion with the registrant’s mark STS INCOGNITO & Wolf Design for hats, hooded sweatshirts, jackets, shirts and t-shirts. In reversing the Examining Attorney, the Board pointed to several cases where a word mark and a word plus design mark were held not confusable because the design feature was the most visually prominent aspect of the mark. For more on design marks, see our web page entitled, Design Trademarks And How They Are Treated By Examining Attorneys.

The general rule is that when considering a mark that includes both words plus a design, the words are generally given greater weight because the words are more likely to be remembered by the consumer, and used to request or reference the goods or services. See In re Viterra, 671 F3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012). However, there is an exception to this rule and, in appropriate cases you should give greater weight to a prominent design feature. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KDAA v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135 (Fed. Cir. 2015). In other words, you can accord more weight to a more distinctive element in a mark. In the case at bar, applicant’s mark features a wolf in sheep’s clothing with an arm extended out against large letters “STS”. Underneath the large wolf design in small letters is the word “incognito”. The Board held that the most prominent feature of the mark was the wolf design and the letters STS and not the shared term “incognito”.

The Board relied on several cases where the design aspect of the mark was viewed as the dominant feature of the mark. See a precedential case decided in 2014, In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) [precedential], where the Board held that the goods for both marks were legally identical. The applicant applied to register the mark REDNECK RACEGIRL & Design, for athletic apparel, and the mark was initially refused by the Examining Attorney for causing a likelihood of confusion with the mark RACEGIRL for various clothing items. The refusal by the Examiner was grounded on the general rule mentioned above, but in that case, the exception to the rule should have applied. The Board reversed the refusal, finding that the first du Pont factor was determinative as the design of the mark was visually dominant, and rendered the term “Racegirl” difficult to read, while emphasizing the RR letters.

This ruling is similar to the precedential decision, In re White Rock Distilleries, Inc.,92 USPQ2d 12982 (TTAB 2009) [precedential], where the TTAB reversed a 2(d) refusal for a vodka infused energy drink. The applicant sought to register the standard character mark VOLTA for an energy vodka infused with caffeine in class 33. The mark cited by the Examining Attorney was a Design mark TERZA VOLTA for wines and sparkling wines. The registered mark contained a dominant design feature that was displayed above the words.  The Board held that the marks’ overall commercial impressions were different based on the prominent design feature in the registered mark.

In re Primeway International LLC,  is also interesting due to the finding made by the Board regarding the relatedness of the goods. Typically, for the purposes of the second du Pont factor, footwear and clothing have been held related. However, here the Board determined that the similarity of the goods (footwear and clothing) weighed only slightly in favor of finding a likelihood of confusion. The Board viewed several retailers’ websites and concluded that footwear and apparel were not featured on the same web pages, nor did the web pages include links between apparel and footwear. The Board concluded that therefore, the consumer may not be aware that footwear and apparel are offered under the same mark. However, in the end this evidence did not sway the Board one way or the other because the Board found the first du Pont factor to be dispositive. If you have questions regarding likelihood of confusion, please feel free to contact the firm for a courtesy consultation.