Failure to Prove Priority: As part of its direct testimony, opposer relied on a registration for the mark PHILLIP GAVRIEL in standard character form to prove priority . Unfortunately it failed to timely renew the registration, and the registration expired after opposer’s testimony period. Therefore opposer could no longer rely on the presumptions stemming from the registration, and it had to base its claim of priority on common law rights. Unfortunately, opposer’s evidence failed to prove use of the mark prior to applicant’s constructive use date, and so the Board dismissed the opposition on that ground.
Likelihood of Confusion: For purposes of completeness, the Board went on to consider the likelihood of confusion issue.
The evidence established that “jewelry and handbags are accessories to a woman’s fashion ensemble and, as such, they are complementary products.” Moreover, the presumed trade channels for applicant’s handbags overlap with those for opposer’s jewelry. Likewise, applicant’s handbags presumably include products sold at all price ranges, including the price ranges for opposer’s jewelry.
Opposer claimed that a number of trade show attendees and buyers have inquired as to any affiliation or relationship between MANSUR GAVRIEL and PHILLIP GAVRIEL. The Board noted, however, that “[t]his sort of ambiguous inquiry is not probative of actual confusion.” See, e.g., Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1334 (TTAB 1992) (inquiries as to corporate affiliations is not evidence of confusion because, without more, they “indicate that these persons were aware that [the companies at issue] were two different entities”); Elec. Water Conditioners, Inc. v. Turbomag Corp., 223 USPQ 162, 164 (TTAB 1994) (“That questions have been raised as to the relationship between firms is not evidence of actual confusion of their trademarks.”).
Instead, the Board found that opposer’s mark PHILLIP GAVRIEL has garnerned significant unsolicited media attention. The involved marks have been in concurrent use since 2013. The Board found that “there has been a reasonable opportunity for confusion to have occurred,” and therefore that the lack of actual confusion weighed in applicant’s favor.
As for the marks, each comprises a given name and a surname. The Board has found, when identical goods are involved, that marks sharing a common surname but different given names were similar. Here, however, applicant introduced copies of third-party registrations and Internet evidence to show the coexistence of companies using common surnames for clothing and accessories: e.g., ANNE COLE and KENNETH COLE, ANDREW WANG and VERA WANG. The Board drew the following inferences from this evidence.
• There is no per se rule that marks consisting of identical surnames and different given names are similar and likely to cause confusion;
• The USPTO has registered marks with identical surnames and different given names in the field of clothing and clothing accessories; and
• A number of different trademark owners have accepted, over a long period of time, that various marks with identical surnames and different common names can be used and registered side-by-side without causing confusion provided that there are differences between the marks and goods in the field of clothing and clothing accessories
The Board found the marks to be more dissimilar than similar in appearance, sound, connotation, and commercial impression, and so it dismissed the opposition.
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TTABlog comment: Perhaps the Board recognized that opposer, by seeking review via civil action, could get its registration into evidence, and so the Board went beyond the priority issue. However, are its findings and conclusion regarding Section 2(d) mere dicta?
Text Copyright John L. Welch 2018.