The Goods and Services: Not surprisingly, the Board found applicant’s clothing items to be related to opposer’s retail apparel store services. However, it found no relatedness between applicant’s bumper stickers and opposer’s services.
The Marks: Opposer argued that the “literal portion” of the challenged mark is identical to its VF mark. However, it maintained that if its motion to change the mark’s description were allowed, the marks “could coexist based on the overall visual differences between the marks.”
Putting aside the argument based on opposer’s motion, which the Board had refused to consider, the Board pointed out that it is the drawing of the mark, “not the words an applicant used to describe it, that determines what the mark is.” See Trademark Rule 2.52: “A drawing depicts the mark sought to be registered.”
The Board found the marks to be dissimilar in appearance, sound, meaning, and commercial impression, “notwithstanding that Opposer is entitled to all depictions of its standard character mark regardless of font style, size, or color.” In re Viterra Inc., 101 USPQ2d 1905, 1909-10 (Fed. Cir. 2012). As recognized in Viterra, a standard character mark does not encompass all possible design elements in a mark.
Here, while Applicant may have intended that its design mark represent the letters “VF,” we do not discern the letter “F” and it is highly unlikely that prospective consumers would. In fact, consumers likely would not perceive any letters in Applicant’s design mark but instead may only perceive a stylized checkmark. We simply find no similarity in appearance, sound, meaning and commercial impression between Applicant’s design mark and Opposer’s standard character mark “VF,” no matter how Opposer would present those letters.
Finding the first du Pont factor to be dispositive, the Board dismissed the opposition.
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TTABlog comment: A strange one. Seems like opposer is just as happy with a finding of no likelihood of confusion.
Text Copyright John L. Welch 2019.