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Third-Party Registrations and Uses for Marks Similar to the Cited Registered Trademark Are Again Deemed Insufficient to Carry the Day

Third-Party Registrations and Uses for Marks Similar to the Cited Registered Trademark Are Again Deemed Insufficient to Carry the Day

In performing the likelihood of confusion analysis between a registered trademark and an applied for mark, the Trademark Trial and Appeal Board (the “Board”) considers a range of factors known as the du Pont factors. One of the factors upon which a case can turn is the similarity of the two relevant marks. When comparing the similarity of the marks, the strength of the registered mark becomes an important part of the analysis and can be affected by the nature and frequency of similar registered marks and third-party uses on similar goods. In the end, the more distinctive and strong a trademark is, the greater the scope of its protection.

When faced with a refusal to register a mark based on an allegation of likelihood of confusion with an existing mark, trademark applicants will often attempt to characterize the existing mark as being weak and entitled to only narrow protection. Further arguing that there are differences between the marks (albeit small differences) may be sufficient to obtain a registration over a weak mark in some instances.

One mechanism for arguing that an existing mark is entitled to only narrow protection is by pointing to the existence of third-party registrations for the same or similar marks, as well as third-party uses of the existing mark. The Board recognizes that “significant third-party use of a particular term in trademarks can result in a conclusion that consumers will look to other elements of a mark to distinguish one mark from another.”

This begs the question of when are third-party registrations and third-party uses of a mark, or a portion of a mark, considered to be “significant” by the Board?

Such is the case in the application proceedings of In re Sunton Enterprises, Inc. In this case, the applicant sought to register the word mark AYLAZZARO for handbags, luggage and trunks. The applicant’s registration was refused based on the examining attorney’s allegation of likelihood of confusion with the existing word mark LAZARO for handbags, briefcases, briefcase-type portfolios and wallets.

The applicant argued that cited LAZARO mark should be entitled to a limited scope of protection due to a large number of third-party registrations and uses for the same/similar mark, and therefore the differences in its AYLAZZARO mark, as compared to LAZARO, are sufficient to warrant a trademark registration. In so doing, the applicant introduced the following evidence of third-party trademark registrations and third-party uses of the LAZARO marks:

  • A trademark registration for LAZARO for wedding gowns;
  • Two trademark registrations for NOIR BY LAZARO for wedding gowns and dresses, bridesmaids gowns and dresses and evening gowns;
  • Use by the third-party registrant of LAZARO for bridal gowns;
  • Use of LAZARO as a designation for a collection of handbags by Etienne Aigner, listed as the “Etienne Aigner Purse Handbag Lazaro Collection”;
  • Use by a designer named “Lazaro” who designs jewelry sold under the mark LAZARO; and
  • Use of LAZARO as a style of men’s shoes, with the heading “Mezlan Lazaro Black Genuine Patent Leather Wing Tip Italian Calfskin Loafer Shoes.”

The Board considered this evidence as “very limited” and largely for “goods that are not the same as the goods in issue.” In particular, the Board gave “no probative value” to the third-party use for men’s shoes. The Board also found that there were clear differences in the types of goods between handbags in the registration, on one hand, and use for jewelry, men’s shoes, and bridal and evening gowns, on the other hand. These differences were sufficient for the Board to conclude that it “cannot say that consumers distinguish the source of these goods based only on the differences in the marks.” The Board further found that the evidence of third-party use “is simply not at a level that we can say that consumers would distinguish between very similar LAZARO marks when used for identical goods.”

Accordingly, the Board found that the third-party registrations and use containing the word LAZARO were not so prevalent to cause consumers to look to other elements in the applicant’s mark to distinguish the cited LAZARO mark. As such, the Board did not view the LAZARO mark as limited to a narrow scope of protection.

Further, the Board concluded that the applicant’s AYLAZZARO mark is likely to cause confusion with the cited registration for LAZARO for handbags, and refused the requested trademark registration. This was based on the identical use for handbags, and due to the similarities in appearance and pronunciation of the two marks.

The proceeding is Serial No. 85863532 (February 19, 2015).

By Mike Koplow and Gary Nelson of Lewis Rocca Rothgerber Christie

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