May 21, 2019

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Stylized Trademark Registration for Specific Term can Provide Same Level of Protection as Standard Word Trademark

Applicant applied to register SOLO (in standard characters) for clothing specifically used for activities related to snowmobiles, motorcycles and ATVs.  The TTAB refused to register the SOLO trademark in light of the existence of the following registration for the stylized mark

for clothing not confined to any specific type of use or channel of trade; and for the stylized mark

for footwear, also not confined to a specific type of use.

This decision may seem obvious, but it does raise at least two interesting trademark concepts:

FIRST:  It is well established that specific clothing items listed in an application are often found to be related to different clothing items identified in a cited registration.  However, specialized clothing (e.g., snowmobile clothing) has been found to be “unrelated” to normal clothing in certain circumstances.  

The argument in favor of the Applicant is tricky because the USPTO will take the position that a list of clothing items without use-based restrictions covers all types of clothing, including items specially design for use while ATVing.  The USPTO tends to make this argument regardless of whether the Applicant or the owner of the cited registration has the use-based restriction when the other does not.  

One way to increase the chances of overcoming this type of refusal is to conduct a statistical analysis of:  (1) how many trademark registrations exist for “normal” clothes only; (2) how many registrations exist for only specialized ATV clothes; and (3) how many registrations exist that include both.  If the percentage of trademark registrations that contain both types of clothes (e.g., ATV and regular clothes) is statistically negligible when compared registrations that only have ATV or regular clothes, the changes of successfully arguing that ATV clothes are unrelated to regular clothes increases dramatically.  

SECOND:  A stylized word mark that allows the consumer to clearly and immediately recognize the word is essentially equivalent to the standard word mark.  

In this case, the Applicant applied for a standard word mark for SOLO, and this mark covers each of the two stylizations of “solo” incorporated into the cited registrations.  Therefore, for the purpose of the likelihood of confusion analysis, the Applicant’s mark and the cited registrations were treated as being equivalent, or nearly equivalent.

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About this Author

Gary J. Nelson, Lewis Roca, Trademark Litigation Lawyer, Los Angeles, IP Matters Attorney
Partner

Gary J. Nelson is a Partner in Lewis Roca Rothgerber Christie’s Intellectual Property practice group. Clients turn to Gary for prosecution and maintenance of large international corporate trademark portfolios, particularly in the fashion and clothing industry. He also specializes in resolving intellectual property disputes in a broad spectrum of industries that also include food, computer software and hardware, office supply, sports and entertainment, among others.

He has managed more than 7,000 individual trademark applications/registrations...

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