TTABlog Test: Are Cell Phone Covers Related To Sunglasses Under Section 2(d)?

Oakley, Inc. opposed an application to register the mark FROGSKINS (standard characters) for "protective cover and cases for cell phones, laptop computers, tablet computers and portable media players," claiming a likelihood of confusion with its identical mark registered for "eyewear, namely sunglasses and accessories for sunglasses, namely, replacement lenses, ear stems and nose pieces." Because the marks are identical, a lesser degree of similarity between the goods is necessary to support a finding of likely confusion. But are the goods close enough? How do you think this came out? Oakley, Inc. v. JMM Lee Properties, LLC, Opposition No. 91231865 [not precedential] (Opinion by Judge Marc A. Bergsman).

Strength of Opposer's Mark: "In determining the strength of a mark, we consider both its inherent strength, based on the nature of the mark itself, and its commercial strength, based on marketplace recognition of the mark." The Board found Oakley's mark FROGSKINS to be inherently distinctive. The mark is registered on the Principal Register without a Section 2(f) claim, and there was no evidence or testimony regarding third-party use or registration of similar marks for similar goods.

As to commercial strength, Oakley claimed that its mark is famous but its proofs fell short. The record showed that Oakley has used the mark since 1985, has sold an average of about $15 million worth of the goods on an annual basis, that it has expended $62,500 per year on advertising, and has sold about 156,250 units per year. The Board, however, noted that long use alone does not establish fame. Oakley offered no evidence of market share and no evidence as to how its advertising expenditures compare to those of competitors. Moreover, the FROGSKINS mark does not appear without the OAKLEY house mark.

Nonetheless, the Board found that FROGKSINS is a "commercially strong mark entitled to a broad scope of protection or exclusivity of use in connection with sunglasses and related accessories, but it does not have the extensive public recognition and renown of a famous mark."

Comparing the Goods: Oakley argued that the goods are related because it sells "goods that compete with the goods identified in Applicant's Application, under its house brand," namely, computer bags and "wristlets" that are able to hold cell phones. These goods, Oakley asserted, are sold in close proximity to its eyewear products.

The fact that Oakley sells the same goods as applicant, even...

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