Determining whether one trademark infringes upon another can sometimes be difficult. When one of the trademarks is a composite trademark (a combined word and design mark), and the other solely a word trademark, the difficulty can be even greater.
Applicant, Don Calder, sought to register the trademark CALIFORNIA REPUBLIC for, among other things, clothing. The examining attorney refused registration under the Lanham Act, Section 2(d), on the grounds that the mark, when applied to clothing, so resembled a previously registered composite mark as to be likely to cause confusion. That composite trademark was described as “a bear as human figure holding a board. There is a star at the top and the stylized text ‘Republik of Kalifornia” appears below.” That mark was also registered for clothing.
The Trademark Trial and Appeal Board (TTAB) reversed the examiner’s refusal, analyzing the marks under the du Pont factors. Even if the word portion of the composite mark was similar to CALIFORNIA REPUBLIC, the TTAB concluded that:
[i]n terms of appearance, it is the design element, rather than the words, that dominates Registrant’s mark. The bear design is much larger than the words REPUBLIK OF KALIFORNIA, and it is by far the most visually significant part of the mark.
In comparing marks, the test is whether they are sufficiently similar in terms of their commercial impression, such that persons who encounter the marks would be likely to assume a connection between the parties. Because of the size of the design on the composite mark (as well as the two marks’ differences in spelling), no consumer would be left to assume a connection between the trademarks.
The TTAB affirms many more refusals than it reverses. Consequently, any reversal, for whatever reason, is always interesting to review. This case is no different.
TTAB Proceeding: In re Don Calder, Serial No. 85143799
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