Similarity of the goods and trade channels/consumers: The Examining Attorney contended that Registrant’s and Applicant’s goods were closely related and travel through overlapping trade channels to the same classes of consumers. He relied on evidence in the form of (1) websites of recognized clothing brands advertising both skirts and undergarments being offered under the same mark, (2) “eight third-party registrations of marks for goods that are identical or very similar to those of Registrant and Applicant,” and (3) “website articles encouraging women to consider the type of undergarments to wear with skirts.” In response, Applicant (1) cited the Board’s decision in H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1729 (TTAB 2008), where the Board dismissed an opposition in view of the dissimilarity of the marks and goods, and (2) contended that consumers would never encounter both parties’ marks in the marketplace because “her exclusive trade channel is her website; she has never sold goods in any brick-and mortar retail establishments.”
The Board rejected Applicant’s arguments, finding that the Examining Attorney’s website and third-party registration evidence supported a finding that Registrant’s and Applicant’s goods are closely related, and that consumers are accustomed to seeing skirts and undergarments offered for sale under the same marks by the same mark owner. With respect to third-party registrations, the Board noted:
While third-party registrations are not evidence that the marks shown therein are in commercial use, or that the public is familiar with them, such registrations that individually cover a number of different items and are based on use in commerce have probative value to the extent that they serve to suggest that the listed goods are of a kind that may emanate from a single source under a single mark.
The Board distinguished the Maidenform case cited by the Applicant on the ground that, in Maidenform, the opposer—unlike the Examining Attorney in this case—failed to introduce any evidence or make any arguments that opposer’s clothing was related to applicant’s undergarments. The opposer thus failed to meet its burden of proving that the parties’ goods were related. The Board also rejected Applicant’s attempt to distinguish the parties’ trade channels and consumers, reasoning that “[b]ecause there are no limitations as to channels of trade in the recitation of goods in either Applicant’s application or the cited Registration, we must presume that the identified goods move in all channels of trade normal for such goods.” The Board therefore concluded that the second and third du Pontfactors favored the USPTO.
Similarity of the marks/commercial impression: Citing the Federal Circuit’s decision in Stone Lion Capital Partners v. Lion Capital, 110 USPQ2d at 1160 (Fed. Cir. 2014), the Board noted that similarity of any one of “appearance, sound, connotation and commercial impression . . . may be sufficient to find the marks confusingly similar.” The Examining Attorney and Applicant agreed that both “Francy” and “Francie” are nicknames for “Frances.” The Applicant argued, however, “that the Examining Attorney fundamentally misconstrue[d] the commercial impression and connotation of her mark” as a whole because FRANCIEPANTS “is a creative play on the combination of her nickname ‘Francie’ together with the ‘fancy-pants’ expression, whereas the term ‘Francy’ in the cited Registration ‘is not used in a broader branding or marketing manner, but rather as a descriptor or identifying name of one particular type of denim skirt.’” The Applicant further argued that FRANCIEPANTS is a unitary expression such that the FRANCIE portion of her mark “cannot be separated from the [PANTS] portion and treated as a dominant or independent piece with a stand-alone impression when the suggestive nature of the mark inherently involves the entire phrase holistically.”
The Board agreed with Applicant that her mark “is a creative play on the colloquial expression ‘fancy-pants’ resulting from the combination of her nickname with the word ‘pants’” and thus “is a unitary mark that has a different meaning and connotation from [and thus] a different, distinct commercial impression from the cited mark.” The Board therefore concluded that “[t]his key [fourth du Pont] factor weighs strongly against a finding of likelihood of confusion.”
Conclusion: Weighing the du Pont factors, the Board ruled that the similarity of the goods and trade channels/consumers were “outweighed by the dissimilarity of the marks due to their different commercial impressions.”
And so the Board reversed the refusal to register.
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SGS comment: Do any of you find that the oral similarity of FRANCY and FRANCIE should have tipped the scale in favor of affirmance?
Text Copyright Stephanie Grace Stella and John L. Welch 2019.