Third-party registration and use evidence led the Board to sustain this opposition to registration of the mark KU:L in stylized form, for “bicycles,” finding it likely to cause confusion with the registered mark KÜHL in stylized form, for “rugged outdoor clothing, namely, jackets, shirts, pants, shorts, t-shirts, and hats.” Alfwear Inc. v. Shuff, Opposition No. 91224467 (December 1, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman).

Fame: Opposer Alfwear claimed that its mark KÜHL is famous, but its proofs fell short. Although Alfwear has used its mark since 1993, had sales of $33 million in 2012, sold more than one million pairs of pants in 2015, and spent nearly $9 million in advertising from 2012-2016, it failed to provide any context for its sales and advertising figures, and so the Board could not gauge the relative level of exposure of the general public to the trademark. Nonetheless, the Board found the mark to be commercially strong.

The Marks: The Board, not surprisingly, found the marks to be similar in appearance. Both marks are likely to be pronounced as “cool.” [I would have said “kewl” – ed.]. The marks would have similar meanings, since they would be pronounced as “cool.” The Board concluded that the marks are similar in appearance, sound, connotation, and commercial impression.

The Goods: The fact that bicycles and outdoor clothing may be used together does not, in itself, justify a finding that the goods are related for likelihood-of-confusion purposes. Opposer Alfwear submitted 23 use-based, third-party registrations for marks covering both bicycles and various clothing items. Opposer also provided 30 third-party websites offering both bicycles and clothing; nine of those websites advertised clothing and bicycles under the same marks. Moreover, opposer has sponsored a annual bike stage race in Utah, and sponsors a competitive bicycle team that races in events across the country. The Board concluded that the involved goods are related products. Applicant admitted that opposer’s goods may be purchased with a low degree of care.

Conclusion:: “Because the marks are similar, and the goods are related and move in the same channels of trade, and Opposer’s ‘rugged outdoor clothing’ may be purchased by consumers exercising a low degree of purchasing care,” the Board found confusion likely and it sustained the opposition.