TTABlog Test: Are Jewelry And Clothing Related To Drinking Vessels And Tableware For Section 2(d) Purposes?

• Published date: 01 September 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

The USPTO refused to register the mark ZTA for jewelry and clothing, finding confusion likely with the identical mark, registered for, inter alia, mugs, cups, bottles, drinkware, and tableware. The fact that the marks are identical weighed "heavily" in favor of affirmance of the refusal. But what about the goods? How do you think this came out? In re Zeta Tau Alpha Sorority, Serial No. 90090117 (August 29, 2022) [not precedential] (Opinion by Judge Linda A. Kuczma).

Of course, when the involved marks are identical, a lesser degree of similarity between the goods is necessary to support a Section 2(d) refusal. Moreover, the goods "do not have to be similar or competitive, or even offered through the same channels of trade, in order to find that there is a likelihood of confusion."

[E]ven if the goods in question are different from one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis. Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000).

Examining Attorney Alberto I. Manca submitted website evidence showing that "fashion labels" (LILLY PULITZER, LIFE IS GOOD, KATE SPADE, SIMPLY SOUTHERN, VERA BRADLEY) and sororities (PI BET PHI, ALPHA DELTA PI) offer jewelry, clothing, drinking vessels, cups, and the like under their respective trademarks. "Therefore, customers familiar with Registrant's goods may well expect that Applicant's goods offered under an identical mark are related and would be provided by Registrant or vice versa i.e., that Registrant's goods are provided by Applicant."

The Examining Attorney also submitted fifteen active, use-based third-party registrations for marks registered for use in connection with those same or similar goods.

The Board therefore found that the involved goods are related for Section 2(d) purposes.

While the goods offered under Applicant's and Registrant's identical marks are not identical or competitive, as noted, the record demonstrates more than enough of a relationship between them that they...