In In re Detroit Athletic Co., [2017-2361](September 10, 2018) the Federal Circuit affirmed the TTAB’s\u00a0affirming the\u00a0Patent and Trademark Office\u2019s refusal to register
\nDETROIT ATHLETIC CO. for sports apparel retail\u00a0services.<\/p>\n
The Trademark Examiner refused registration of\u00a0DETROIT ATHLETIC CO. in view of a prior registration on DETROIT ATHLETIC CLUB.\u00a0 The TTAB affirmed, concluding that, \u201cbecause the\u00a0marks are similar, the goods and services are related, and\u00a0the channels of trade and consumers overlap,\u201d consumers\u00a0are likely to be confused by the marks.\u00a0 \u00a0The Board considered four of the thirteen duPont factors relevant:\u00a0 (A) similarity\u00a0or dissimilarity of the marks; (B) similarity or dissimilarity and nature\u00a0of the goods or services; (C) similarity or dissimilarity of\u00a0trade channels;\u00a0and (D) concurrent use without evidence of\u00a0actual confusion.<\/p>\n
On the similarity of the marks, the Federal Circuit found the TTAB’s finding that the marks \u201care nearly identical in terms of sound,\u00a0appearance and commercial impression\u201d was supported by substantial evidence.\u00a0 The Federal Circuit undertook a detailed analysis of the marks, finding that\u00a0when\u00a0viewed in their entireties, the marks reveal an identical\u00a0structure and a similar appearance, sound, connotation,\u00a0and commercial impression.\u00a0 The Federal Circuit rejected the argument that the difference between Co. and Club would allow consumers to distinguish the marks.\u00a0 The Federal Circuit said that while the mere fact that \u201cCo.\u201d and \u201cClub\u201d were\u00a0disclaimed from their respective does not give one license to simply ignore those\u00a0words in the likelihood of confusion analysis, the TTAB did not err in focusing on the more dominant portions of the marks.\u00a0 Moreover, the record showed that these terms did not serve source-identifying functions.<\/p>\n
With respect to the similarity of the goods, the Federal Circuit agreed with the TTAB that\u00a0while the goods and services are not identical,\u00a0they substantially overlap, which weighs in favor of\u00a0finding a likelihood of confusion. In response to applicant’s argument that\u00a0consumers would have little\u00a0problem distinguishing between DACo\u2019s clothing store With respect to trade channels, the Federal Circuit found that the Board’s determination that\u00a0the Detroit Athletic Club\u2019s clothing comprises the\u00a0type of goods likely to be sold through applicant’s sports\u00a0apparel retail services, was\u00a0supported by\u00a0substantial evidence.\u00a0\u00a0Applicant argued that the Detroit Athletic Club sells\u00a0clothing only to its club members and only in its gift shop\u00a0located onsite, and thus this would prevent\u00a0confusion among the public at large, but the Federal Circuit found this too, irrelevant, because confusion must be\u00a0evaluated\u00a0with an eye toward the channels specified in the application\u00a0and registration, not those as they exist in the real\u00a0world.\u00a0 The Federal Circuit noted that to the extent\u00a0applicant objects to the breadth of the goods\u00a0or channels of trade described in the Detroit Athletic\u00a0Club\u2019s registration, that objection amounts to an attack\u00a0on the registration\u2019s validity, an attack better suited for\u00a0resolution in a cancellation proceeding.<\/p>\n Finally, with respect to the lack of confusion during concurrent use, the Federal Circuit noted that\u00a0the relevant test is likelihood of\u00a0confusion, not actual confusion, so evidence On balance, the factors supported a finding of likelihood of confusion.\u00a0 The Federal Circuit rebuffed applicant’s argument that\u00a0the Board erred by not addressing <\/p>\n <\/p>\n <\/p>\n <\/p>\n","protected":false},"excerpt":{"rendered":" In In re Detroit Athletic Co., [2017-2361](September 10, 2018) the Federal Circuit affirmed the TTAB’s\u00a0affirming the\u00a0Patent and Trademark Office\u2019s refusal to register DETROIT ATHLETIC CO. for sports apparel retail\u00a0services. The Trademark Examiner refused registration of\u00a0DETROIT ATHLETIC CO. in view of … Continue reading
\nand the Detroit Athletic Club\u2019s private social club., the Federal Circuit said that the relevant\u00a0inquiry in an ex parte proceeding focuses on the goods and\u00a0services described in the application and registration, and\u00a0not on real-world conditions.<\/em><\/p>\n
\nthat the consuming public was not actually confused is\u00a0legally relevant to the analysis, but it is not dispositive.\u00a0 Further, the Federal Circuit’s analysis of applicant’s evidence did not establishe a lack of consumer confusion in commercially meaningful contexts.
\nThe Federal Circuit therefore concluded that substantial evidence therefore supports the TTAB\u2019s\u00a0finding that the evidence purporting to show a lack of\u00a0actual confusion was not sufficiently probative.<\/p>\n
\nall DuPont factors for which evidence was proffered, noting that it is well established that the Board need not\u00a0consider every DuPont factor.\u00a0 The Board is not required to expressly address each evidentiary item\u00a0proffered by a party.<\/p>\n