The USPTO refused registration of the mark HYDRAPORE for “breathable waterproof fabric sold as an integral component” of various clothing items, including jackets and caps, finding a likelihood of confusion with the registered mark HYDRO PORE for “clothing, namely, tops, bottoms, jackets, headwear, and footwear.” Applicant Strike Brands argued that the cited mark merely identifies the source of the clothing, not the source of the fabric, and further that HYDRO PORE is commercially weak since the word HYDRO is included in numerous third-party registered marks for clothing. How do you think this came out? In re Striker Brands LLC, Serial No. 87552915 (August 23, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Goods: The Board noted that the subject application encompasses fabric for general clothing items, and therefore “Applicant’s fabric may be sold as components of Registrant’s goods.” Examining Attorney Andrew Leaser submitted twenty use-based, third-party registrations for marks identifying, inter alia, fabric sold as a component of clothing as well as particular items of clothing: e.g., CASHMERLON, DURALOCK, and TAC DRY. Although these registrations do not alone prove that the goods are related, since there was no proof that the marks are in use or that the public is aware of them, they “may have some probative value to the extent they may serve to suggest that the goods are of a kind that emanate from a single source.” The Board found that “the totality of the dictionary and third-party registration evidence demonstrates that consumers would readily expect that fabrics such as breathable waterproof fabric and clothing could emanate from the same sources.” [Not sure what dictionary definitions have to do with it – ed.].

Striker contended that the cited mark “is intended to enable consumers to readily identify the source of the breathable waterproof fabric, which may be used in the construction of a variety of brands of clothing items bearing their own mark to further indicate the source of the clothing item. Registrant’s goods, by contrast, merely indicate the source of the clothing item, and not the source of the fabric or material.” The Board was not impressed: “The evidence of record clearly establishes that fabrics and items of clothing made of such fabric may emanate from common sources.”

Channels of Trade: The Examining Attorney provided Internet evidence that six third parties – Eddie Bauer, Helly Hanson, Dick’s Sporting Goods, Marmot, REI and Patagonia – advertise clothing and the waterproof and weatherproof components from which the clothing is made (although some under different marks). Thus Striker’s argument that “[w]here the fabric is directed to manufacturers of clothing and the clothing is sold to retailers, there may not be a likelihood of confusion” was belied by the evidence.

The Marks: Based upon the definitions of record, the Board found that HYDRO PORE “suggests a membrane with minute openings to permit water to pass through,” and the mark therefore “appears to suggest a function or feature of the clothing items identified thereby.” Striker pointed to 33 third-party registered marks beginning with the term “HYDRO” for various types of apparel or fabric, which confirmed the Board’s conclusion that the cited mark is suggestive and therefore entitled to a narrower scope of protection than an inherently distinctive mark.

Striker maintained that  the differences between HYDRO and HYDRA “significantly changes how the marks are perceived.” The Board did not agree, noting that the definition of HYDR as water or liquid and concluding that consumers “may view both marks as connoting minute spaces in a membrane allowing water or liquid to pass through.”

We find as a result that Applicant’s HYDRAPORE mark is nearly identical to the HYDRO PORE mark in the cited registration in appearance and sound. To the extent consumers may ascribe somewhat different meanings to the marks based upon differences in the definitions of HYDRA and HYDRO, such potential differences are not sufficient to create dissimilar commercial impressions between the marks, particularly given that consumers may also view the marks as having the same meaning.

The Board found the marks more similar dissimilar.

Conclusion: “[C]onsumers familiar with Registrant’s goods offered under its mark would be likely to believe, upon encountering Applicant’s mark, that the goods originated with or are associated with or sponsored by the same entity.”

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Text Copyright John L. Welch 2019