The USPTO refused registration of the mark THE BEVERLY for "denims; jeans; pants," finding the mark likely to cause confusion with the registered mark BEVERLY JEANS & Design, shown below, for "pants; shirts; tops; bottoms" [JEANS disclaimed]. Applicant contended that the marks are distinguishable because applicant's mark will be perceived as a "style name" for its "Forever 21" jeans while BEVERLY JEANS is a brand name. How do you think this came out? In re Forever 21, Inc., Serial No. 86678161 (November 2, 2016) [not precedential].

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Applicant submitted website printouts showing how its mark is "actually used" and that it is "in conformance with marketplace convention for style names." According to applicant, "style names are commonly used in the jeans market" and "such style names commonly begin with the word 'The.'"

The Board was unmoved. Even if the applied-for mark is used as a style name, there is nothing to stop applicant from using it as a source-identifier for its products, and not just as a "style name." Nor are there any restrictions on applicant's use of its mark, nor any guarantee that "Forever21" will always appear in close proximity.

Even if consumers view applicant's mark as a "style name," confusion is still likely. Consumers familiar with the BEVERLY JEANS & Design mark may mistakenly believe that Applicant’s mark is merely a reference to Registrant’s style of jeans. That would be consistent with applicant's website evidence, which shows third-party usage of "The" as a prefix in a second reference to the same goods (e.g., "The Fayza" referring to "Fayza Boyhood Jeans").

If consumers do not perceive applicant's mark as a style name, the involved marks are confusingly similar. The word "The" will be seen as "having no source-indicating significance or as simply directing focus back to the common term, BEVERLY, which dominates both marks."

The similarity between the marks is enhanced by the fact that BEVERLY has no demonstrated significance vis-a-vis the involved goods and appears to be an arbitrary use of what is otherwise a proper name. There was no showing that any other entities use this term and Applicant made no argument that BEVERLY is weak or diluted.

The Board found the marks to be "very similar" and it affirmed the refusal to register.