The Marks: The Board found the marks to be “very similar in appearance, sound, connotation and commercial impression, due to the shared phrase OUT OF ORDER.” To the extent the consumers see the element “OOO” as a mere design, the literal element OUT OF ORDER would dominate the mark. If the “OOO” is viewed as three letters, they will be seen “as an abbreviation, initialism or acronym for the wording OUT OF ORDER, which only reinforces the dominant nature of the phrase OUT OF ORDER in Registrant’s mark.” Therefore, the Board found the term OUT OF ORDER to be the dominant portion of the cited mark.
Manja pointed to a statement made by registrant’s attorney during prosecution of its underlying application, asserting that “OOO” is the dominant part of registrant’s mark. The Board refused to consider this an “admission” by registrant, and in any case the statement “simply expresses a legal argument and purported intention of that applicant (now Registrant) and does not reflect how the purchasing public views the cited mark.” Moreover, each application is considered by the Board on its own record.
Manja argued that, in registrant’s actual use of the cited mark, the term “out of order” ironically suggests that its goods are distressed and would not be working properly, whereas in applicant’s mark the term suggests unruliness, rebelliousness and edginess. The Board was not impressed. It disagreed that the marks would have different meanings, and “even if consumers were to discern an ironic connotation when viewing Registrant’s mark on its identified goods, we see no reason why they would not perceive Applicant’s mark on its identified clothing in the same manner, especially when fashions trend towards torn or ‘distressed’ clothing.”
The Goods: Examining Attorney Khanh M. Le submitted a number of Internet web pages from third-party websites “demonstrating that a single entity is likely to offer for sale many of the clothing articles identified in the application, and watches, necklaces and earrings, such as those identified in the registration, under the same mark.” E.g., KATE SPADE, J. CREW, LOFT, BOSS, and DIESEL. Furthermore, the Board found that the involved goods are indeed complementary: “watches, earrings and necklaces are a type of goods that consumers could purchase at the same time as the sort of clothing identified in the application, or with an earlier purchase of such goods in mind, so as to coordinate a fashionable ensemble.” The Board therefore concluded that the goods are “closely related.”
This same evidence confirmed that the involved goods travel in the same channels of trade and are offered to the same classes of consumers.
Manja maintained that registrant’s goods are “luxury designer watches” that “are sold at prices that reflect the high quality of these goods (i.e., on average 400 USD),” and therefore consumers would exercise considerably more care when purchasing registrant’s watches as compared to Manja’s T-shirts, outerwear, and hats. The Board pointed out, however, that there are no limitations as to price in either the subject application or the cited registration, and so this argument was, so to speak, out of order.
Prior Registration: Finally, Manja pointed to a now-cancelled third-party registration for OUT OF ORDER for clothing, which registration co-existed for a time with the cited registration. This, according to Manja, supports its position here. The Board considered this argument under the catch-all 13th du Pont factor but found it unavailing. Again it pointed out that each case must be decided on its own record. Moreover, a cancelled registration is not entitled to any of the presumptions of Section 7(c) of the Lanham Act.
Conclusion: The Board found confusion likely and it affirmed the Section 2(d) refusal.
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Text Copyright John L. Welch 2019.