Incontestable - June 2009 - Brown Shoe Co. v. Robbins

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June 2009 Issue

TTAB Cases

Brown Shoe Co. v. Robbins,
Opp. No. 91176273 (TTAB May 13, 2009)

ABSTRACT
The TTAB sustained an opposition against the mark PALOMITA for shirts, pants, shoes, and hats on the ground of likelihood of confusion based on Opposer’s prior use and registration of the mark PALOMA for various clothing and footwear products. The TTAB dismissed Opposer’s claim of fraudulent misuse of a trademark registration symbol, however, based on evidence that Applicant believed that it was proper to use a registration symbol for a mark not yet registered in the United States because that mark was already registered in Mexico.

CASE SUMMARY

FACTS
Applicant Brown Shoe Co., Inc. filed an intent-to-use application for the mark PALOMITA for “shirts, pants, shoes and hats” in Class 25. Opposer Robbins opposed registration of Applicant’s mark on the ground that it was likely to cause confusion with Opposer’s previously used and registered PALOMA mark for various clothing and footwear products. Opposer also asserted a claim of fraudulent misuse of the federal registration symbol. Applicant filed an answer denying the salient allegations.

ANALYSIS
In evaluating Opposer’s likelihood-of-confusion claim, the TTAB found that the parties’ goods were legally identical or closely related. As a result, because there were no limitations in either Opposer’s registration or the subject application, the TTAB presumed that the parties’ goods would be sold in the same channels of trade to the same classes of purchasers. The TTAB also found that the clothing items would not be purchased with a great deal of care. Accordingly, the Du Pont factors of similarity of the goods, channels of trade, classes of purchasers, and conditions of sale all favored a likelihood of confusion.

Turning to the marks, the TTAB found that the PALOMITA and PALOMA marks were very similar in sound and appearance, and differed only by the addition of the letters “IT” to the end of Applicant’s mark. In their briefs, both parties had addressed the doctrine of foreign equivalents. The evidence established that PALOMA was a Spanish word with the English translation of “dove,” and PALOMITA is the diminutive of the word PALOMA in the Spanish language, meaning “little dove.” Applicant argued, however, that PALOMITA also had additional meanings in Spanish, namely, “checkmark” and “popcorn.”

Because the marks were Spanish words, the TTAB explained that it was required to consider the connotation of the marks to both non-Spanish-speaking consumers and to Spanish-speaking consumers. In English, the words had no meaning. Accordingly, because of the similarity in appearance between the marks, the TTAB reasoned that the marks would likely be perceived by non-Spanish speakers as having similar meanings. Thus, even if it accepted the translation of PALOMITA proposed by Applicant (i.e., “checkmark” or “popcorn”), the TTAB found that it would not be sufficient to distinguish the mark for non-Spanish speakers from Opposer’s PALOMA mark.

As for Spanish-speaking consumers, even if they understood the multiple meanings of PALOMITA, the TTAB reasoned that one meaning of the term was “little dove” and there was nothing inherent in the goods that would lead a consumer to the “checkmark” or “popcorn” meanings over the “little dove” connotation. The TTAB thus concluded that the similarities outweighed the minor differences in the endings of the mark. Finally, the TTAB found the lack of any evidence of actual confusion was not particularly probative.

Turning to Opposer’s claim of fraudulent misuse of the registration symbol, the TTAB noted that mistake or inadvertence would generally overcome a claim of fraudulent misuse. To prove its claim, Opposer relied on Applicant’s responses to interrogatories and requests for admissions, which indicated that Applicant had used the registration symbol next to its trademark because it owned a Mexican registration for the mark, and thus it believed that it was proper to do so. Applicant also relied on these responses, as well as Section 901.01 of the Trademark Manual of Examining Procedure, which provides: “When a foreign applicant’s use of the symbol on the specimens is based on a registration in a foreign country, the use is appropriate.”

Based on this evidence, the TTAB found that Applicant believed her use to be proper based on the registration of the mark in Mexico. The TTAB also emphasized that, upon learning of the possible misuse of the registration symbol, Applicant had ceased using the symbol. Thus, Opposer had failed to prove its claim of fraudulent misuse.

The TTAB sustained the opposition as to Opposer’s claim of priority and likelihood of confusion under Section 2(d), and dismissed as to the claim of fraudulent misuse.

CONCLUSION
A fraudulent-misuse claim will generally be defeated by a reasonable explanation that such use was inadvertent or made without any intent to deceive. Further, the TTAB will favorably view any effort to discontinue the offending use after learning such use is improper.