The USPTO refused registration of the mark RICHARD RAWLINGS’ GARAGE for “Headgear, namely, hats, caps, bandanas and beanies; Hooded pullovers; Hooded sweatshirts; Jackets; Pullovers; Sweatshirts; T-shirts; Tank Tops; Socks; Underwear; all of the aforementioned goods bearing ornamental designs that associate the goods with the persona of Richard Rawlings or his businesses,” finding the mark likely to cause confusion with the registered mark RAWLINGS (in standard character and stylized form), for various clothing items, including caps, socks, t-shirts, underwear, and jackets.” Applicant argued that consumers will be able to distinguish the source of its goods because of their connection with the persona of Richard Rawlings. How do you think this came out? In re Richard Rawlings’ Garage, LLC, Serial No. 87039427 (November 16, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Goods: Applicant argued that Rawlings’ goods consist primarily of sporting apparel, while its goods are related to Richard Rawlings or his persona. The Board was unmoved. First, nothing in the subject application excludes sporting apparel, and some of Rawlings’ goods are not athletic apparel. Second, the inclusion of the exclusive language “all of the aforementioned goods bearing ornamental designs that associate the goods with the persona of Richard Rawlings or his businesses” in the subject application is insufficient to distinguish the involved goods.

The CAFC addressed a similar situation in In re i.am.symbolic, LLC, in which the identification of goods included the wording “associated with William Adams, professionally known as ‘will.i.am.'” The court there ruled that the restrictive language did not (1) limit the goods “with respect to either trade channels or class of purchasers”; (2) “alter the nature of the goods identified”; or (3) “represent that the goods will be marketed in any particular, limited way, through any particular, limited trade channels, or to any particular class of customers.” The CAFC upheld the Board’s determination that “the will.i.am restriction does not impose a meaningful limitation in this case for purposes of likelihood of  confusion analysis.”

The Board concluded that this second du Pont factor strongly favored a finding of likely confusion.

The Marks: Applicant argued that the marks engender different commercial impressions because the applied-for mark would be perceived by consumers as referring to Richard Rawlings, an allegedly famous TV reality show personality. The Board noted, however, that “the fame of a junior party does not obviate a finding of likelihood of confusion.” In any case, applicant failed to proved that “Mr. Rawlings’ persona or his brand has achieved such a level of’ notoriety or fame that would change the commercial impression of Applicant’s mark in any meaningful way so as to distinguish it from Registrant’s marks.”

As to the marks themselves, the words “RICHARD RAWLINGS” would likely be understood to be a personal name of one Richard Rawlings. “Because the literal portion of the cited marks consist only of the surname RAWLINGS, consumers seeing the marks on identical goods are likely to assume that RICHARD RAWLINGS is the same person, or is affiliated with, the person referred to in Registrant’s RAWLINGS marks.”

We also find that the addition of the term GARAGE at the end of Applicant’s mark is insufficient to differentiate the marks. Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting other distinctive matter. If an important portion of both marks is the same, as is the case here, then the marks may be confusingly similar notwithstanding some differences.

The Board found that the similarity between the marks weighs in favor of a finding of likelihood of confusion.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

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Text Copyright John L. Welch 2018.