The United States Court of Appeals for the Federal Circuit overturned a TTAB decision to refuse registration of a paw print logo, ruling that the TTAB focused on specific elements of the two marks rather than comparing the marks in their entirety, and also failed to recognize the relatively narrow scope of protection afforded to marks involving paw prints.
Appellant Jack Wolfskin applied to register the design mark shown below for clothing. Appellee New Millennium Sports opposed the registration on the ground of likelihood of confusion with its earlier registered mark KELME and design as shown below, also for clothing.
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The TTAB sustained the opposition, thus refusing to register the Paw Mark. The TTAB found that the similarity of the marks pointed to a likelihood of confusion, and that the number and nature of similar marks in use was a neutral factor.
Similarity of the Marks: The Court cited to authority holding that when a mark contains both words and design, the verbal portion of the mark is the one most likely to indicate origin of the goods, but that similarity of marks must be considered on a case-by-case basis. The TTAB recognized that the word “KELME” in the Kelme Mark created a visual and phonetic impression that was absent from the Paw Mark. The TTAB found, however, that the word KELME was not sufficient to overcome the likelihood of confusion caused by the substantial similarities of the paw print elements of both marks. To support this conclusion, the TTAB stated that “[c]ompanies that use marks consisting of a word plus a logo often display their logos alone, unaccompanied by the literal portion of their trademarks.”
The Court found that the TTAB erred in essentially disregarding the word KELME in the Kelme Mark. In doing so, the TTAB failed to consider the marks as a whole. The Court further found that the TTAB’s statement that logos in composite marks are often displayed alone cannot support ignoring the word element of the mark without providing some rational basis for doing so.
Strength of the cited Kelme Mark: In the Opposition, Jack Wolfskin submitted evidence of numerous other marks that include a paw print that have been registered and used in connection with clothing. The TTAB considered the evidence, but disregarded most of it on the ground that it consisted of secondary source indicators: either because the paw print design was used to identify a school or sports team rather than identifying an apparel or sporting goods company, or because it was used as a secondary source indicator for business offering pet-related goods and services. The TTAB reviewed the remainder of the evidence and found sufficient differences in the designs to distinguish them from the Kelme Mark.
The court found the TTAB did not give proper consideration to Jack Wolfskin’s evidence as to the strength of the Kelme Mark. As the court explained in its recent ruling in Juice Generation, Inc., v. GS Enterprises, LLC, (case no. 14-1853, Fed. Cir. July 20, 2015), extensive evidence of third-party use and registrations is “powerful on its face,” even where the specific extent and impact of the usage has not been established. The court found that the volume of evidence submitted by Applicant suggested consumers are conditioned to look for differences between paw-print designs to determine the source of a product.
The Court concluded that the evidence indicates the paw print portion of the Kelme Mark is relatively weak and that the TTAB’s ruling that there is likelihood of confusion cannot be sustained.
Jack Wolfskin Ausrustung fur Draussen GmbH & Co., KGaA v. New Millennium Sports SLU, Case No. 14-1789, (Fed. Cir. August 2015).