The USPTO refused registration of the mark shown below left, for “T-shirts,” finding the mark likely to cause confusion with the mark shown below right, for “clothing, namely hats and shirts.” The goods are legally identical, but what about the marks? How do you think this came out? In re Khalid Akil White DBA BLKMPWR, Serial No. 86644303 (September 29, 2017) [not precedential] (Opinion by Judge Linda A. Kuczma).

Applicant maintained that the dominant portion of his design is the map of Africa, while in the cited mark the map of the United States is dominant, that the cited design suggests that Africa dominates the United States, and that the alteration of his design to fit the United States outline within the map of Africa profoundly changes the commercial impression of his mark as compared to the cited mark.

Contending that his mark conveys a strong historical context which cannot be divorced from the overall likelihood of confusion analysis with the cited mark, Applicant argues that the “use of historical and cultural symbolism [in his mark] creates a unique commercial impression of Pan-African unity and signifies the  repatriation of Americans of African ancestry to Africa,” and that the “inclusion of the United States, a world superpower and historically-imperialist nation, confined within the interior area of a continent (which was subjected to colonialization by imperialist nations) is rather peculiar and would most likely create a distinct and memorable commercial impression to reasonably prudent purchasers. Applicant also contends that the “applied-for-mark’s inclusion of the United States’ map element within the central area of the African continent signifies the African-American race is a critical set within the African Diaspora and therefore vital to the repatriation of all persons of African descent to repatriate to Africa in mind, body, and soul. As such, those of African descent which consider themselves members of the African Diaspora would be drawn to Appellant’s applied-for-mark as it signifies repatriation or return to their ‘motherland.’”

The Board, however, pointed out that applicant’s intended interpretation of the two marks is not necessarily how consumers will perceive the marks. Although applicant maintained that African-Americans would understand his meaning, the Board observed that the identification of goods is not limited to African-American consumers. [Would such a limitation be permitted? effective? – ed.].

Applicant argued that his color scheme is a significant difference, but the Board pointed out that the cited mark is registered without a color claim and could be used in the same colors as the applied-for mark.

Both marks include overlaid maps of Africa and the United States. Inasmuch as Registrant’s mark is not restricted to the use of black and white colors, it can appear in the red, black and green colors shown in Applicant’s mark creating a similar commercial impression to Applicant’s mark.

Noting that when the involved goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion, the Board found that “the minor differences between them are insufficient to outweigh the remaining factors that favor refusal of the registration in this case.”