The USPTO refused registration of the mark SLAY OR PREY, in standard character form, for various clothing items including T-shirts, finding it likely to cause confusion with the registered mark PRAY THEN SLAY & Design (specimen below) for “T-shirts; T-shirts for adults.” How would you decide this appeal? In re Manuel E. Tellez, Serial No. 87229195 (November 3, 2017) [not precedential].

Because the goods are in part identical, the Board must presume that they travel in the same, normal channels of trade to the same classes of consumers.

As to the marks, the Board took judicial notice of the meanings of “pray,” “prey,” and “slay” from (the Random House Dictionary).

Clearly, although “prey” and “pray” are phonetic equivalents, their meanings differ sharply. Taking into account this significant difference, we find that Applicant’s mark most likely gives the impression of presenting a choice to either kill or become a victim by falling prey to a predator. By contrast, we find that the registered mark most likely conveys a command to first confer with the divine through prayer, and next to impress others (the slang meaning of “slay”). The mark may suggest that prayer will lead to making a strong impression on others – i.e. if you pray, then you will slay. Alternatively, Registrant’s mark could be viewed as a call to faith-inspired violence – i.e. to pray and then slay, in the traditional sense of the word.

The Board therefore found the overall connotations and commercial impressions of the two marks to be dissimilar. Moreover, because of the transposition of the words, the marks do not look or sound identical, though there is some similarity. Consumers reading the marks would recognize the different meanings of “pray” and “prey.”

The Board noted that the transposition of words does not necessarily avoid a likelihood of confusion between two marks, but here there is not only a transposition but different words with different meanings.

Overall, we find the marks in this case dissimilar, particularly because of their very different connotations and commercial impressions.

Noting that a single du Pont factor may be dispositive, especially when it is the first factor, the Board reversed the refusal.