The USPTO refused to register the mark MERLIN for "timepieces and chronometric instruments," finding it confusingly similar to the identical mark registered for various articles of clothing. The Examining Attorney relied on third-party registration evidence to show the relatedness of the goods, but Applicant Breitling submitted "a number of pairs of use-based third-party registrations for the same mark [but different owners] that are used on clothing on one hand and watches on the other." How do you think this came out? In re Breitling SA, Serial No. 879152818 (January 25, 2017) [not precedential].

The identity of the marks "weighs heavily" in favor of a finding of likely confusion. When the marks are identical a lesser degree of similarity between the goods is necessary to support such a finding.

Applicant Breitling submitted numerous registrations for the mark MERLIN but none covered goods related to those at issue here, and so the registrations had no probative value vis-a-vis the strength of the cited mark.

Examining Attorney Fred Carl III submitted third-party registrations that encompassed both clothing and watches under a single mark, and the marks were not house marks or designer marks. Breitling countered with pairs of registrations showing that the USPTO has registered the same or similar marks for clothing offered by one party and watches offered by another. Some of the registrations were cancelled, however, and others were not based on use in commerce. Moreover, some of the pairs were for not for identical marks, or covered goods unrelated to those involved here.

Nonetheless, a number of the pairs of marks of marks were relevant. "This evidence does not, however, disprove the Examining Attorney’s evidence that watches and clothing may be sold under the same mark. It merely reduces the weight to which the Examining Attorney’s evidence is entitled."

The Board concluded that there is some relationship, albeit not a strong one, between watches and clothing. It pointed out that watches and clothing may be complementary products in that consumers may purchase watches as a fashion accessory. Thus some consumers may expect watches and clothing identified by the same mark to emanate from the same source.

The evidence showed that watches and clothing may be sold in the same trade channels. The Board noted that the application and cited registration have no limitations as to the specific type of goods, and so they encompass inexpensive items bought with only ordinary care.

Considering the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal to register.