Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.
October 2008 Issue
TTAB Cases
In re SL&E Training Stable, Inc.,
App. No. 78806669 (TTAB 2008)
ABSTRACT
Applicant appealed a final refusal to register the mark SAM EDELMAN for luggage, handbags, wallets, and related products on the ground of a likelihood of confusion with a prior registration for the mark EDELMAN for luggage trunks, handbags, wallets, traveling bags, and other goods. The TTAB rejected Applicant's argument that the public policy favoring the right of an individual to register his name should trump any likelihood-of-confusion concerns, and affirmed the PTO's refusal of registration on likelihood-of-confusion grounds.
CASE SUMMARY
FACTS
Edelman Shoe Company, LLC filed an intent-to-use application for the mark SAM EDELMAN for "luggage, handbags, purses, wallets, all-purpose tote bags, all-purpose sports bags, backpacks," in Class 18. The mark SAM EDELMAN identifies an individual named Sam Edelman who consented to registration of the mark. The SAM EDELMAN mark and application were subsequently assigned to SL&E Training Stable, Inc. ("Applicant"), which also owned a registration for the identical mark SAM EDELMAN for "footwear, namely, boots, shoes, slippers and sandals," in Class 25.
Applicant appealed the PTO's refusal of registration, citing an existing registration for EDELMAN for "articles made from leather and imitations of leather, and not included in other classes, namely—wallets, handbags, traveling bags, luggage trunks, umbrellas, harnesses and saddlery; animal skins and hides; tanned leather adapted for use in upholstering furniture, namely—seating for use in airplanes, cars, and other vehicles," in Class 18. On appeal, Applicant argued that the strong public policy favoring the right of individuals to use and register their personal names should trump any likelihood-of-confusion concerns.
ANALYSIS
The TTAB rejected Applicant's argument, noting that neither the Court of Appeals for the Federal Circuit nor its predecessor, the Court of Customs and Patent Appeals, had recognized such a "strong public policy." Accordingly, the mere fact that SAM EDELMAN was an individual's name did not give Applicant an unfettered right to use that name where it conflicted with a previously registered mark.
In evaluating the likelihood-of-confusion factors de novo, the TTAB held that the SAM EDELMAN and EDELMAN marks shared the same surname EDELMAN, that consumers would likely view the EDELMAN mark as an abbreviated form of Applicant's mark and, accordingly, the two marks were similar in appearance, sound, meaning, and commercial impression. The TTAB likewise found that Applicant's and registrant's goods were identical in part, as both descriptions included wallets, handbags, and luggage, and closely related or directly competitive relative to the remaining listed goods. Because some of the goods in the application and registration were identical, and neither the registration nor the application contained any trade-channel restrictions, the TTAB presumed that the parties' trade channels were identical or overlapping. The TTAB rejected Applicant's argument that confusion was unlikely because consumers of handbags are sophisticated, noting that there were no restrictions or limitations in the description of Applicant's goods or the goods in the cited registration. Accordingly, the descriptions were broad enough to encompass inexpensive wallets, handbags, luggage, and traveling bags sold in discount stores to consumers who may not exercise a high degree of care. The TTAB likewise rejected Applicant's argument that its ownership of a registration for the identical mark for similar goods (namely, footwear) offered further support for registration. Noting that the issuance of the prior registration was not controlling, the TTAB held that it could not delegate its duty to decide an appeal from the final refusal to register by adopting the conclusion reached by another examining attorney on a prior record. Finally, the TTAB concluded that Applicant had failed to demonstrate that the SAM EDELMAN mark was famous in the fashion industry. Based upon all of these findings, the TTAB upheld the refusal of registration.
CONCLUSION
While commentators have long emphasized the public policy favoring the right of an individual to use and register his personal name, the TTAB, Federal Circuit, and other federal courts that have faced this issue have repeatedly found that such right is not unfettered. Accordingly, personal name marks are subject to the same likelihood-of-confusion analysis applied to other types of marks.
TTAB Cases
In re SL&E Training Stable, Inc.,
App. No. 78806669 (TTAB 2008)
ABSTRACT
Applicant appealed a final refusal to register the mark SAM EDELMAN for luggage, handbags, wallets, and related products on the ground of a likelihood of confusion with a prior registration for the mark EDELMAN for luggage trunks, handbags, wallets, traveling bags, and other goods. The TTAB rejected Applicant's argument that the public policy favoring the right of an individual to register his name should trump any likelihood-of-confusion concerns, and affirmed the PTO's refusal of registration on likelihood-of-confusion grounds.
CASE SUMMARY
FACTS
Edelman Shoe Company, LLC filed an intent-to-use application for the mark SAM EDELMAN for "luggage, handbags, purses, wallets, all-purpose tote bags, all-purpose sports bags, backpacks," in Class 18. The mark SAM EDELMAN identifies an individual named Sam Edelman who consented to registration of the mark. The SAM EDELMAN mark and application were subsequently assigned to SL&E Training Stable, Inc. ("Applicant"), which also owned a registration for the identical mark SAM EDELMAN for "footwear, namely, boots, shoes, slippers and sandals," in Class 25.
Applicant appealed the PTO's refusal of registration, citing an existing registration for EDELMAN for "articles made from leather and imitations of leather, and not included in other classes, namely—wallets, handbags, traveling bags, luggage trunks, umbrellas, harnesses and saddlery; animal skins and hides; tanned leather adapted for use in upholstering furniture, namely—seating for use in airplanes, cars, and other vehicles," in Class 18. On appeal, Applicant argued that the strong public policy favoring the right of individuals to use and register their personal names should trump any likelihood-of-confusion concerns.
ANALYSIS
The TTAB rejected Applicant's argument, noting that neither the Court of Appeals for the Federal Circuit nor its predecessor, the Court of Customs and Patent Appeals, had recognized such a "strong public policy." Accordingly, the mere fact that SAM EDELMAN was an individual's name did not give Applicant an unfettered right to use that name where it conflicted with a previously registered mark.
In evaluating the likelihood-of-confusion factors de novo, the TTAB held that the SAM EDELMAN and EDELMAN marks shared the same surname EDELMAN, that consumers would likely view the EDELMAN mark as an abbreviated form of Applicant's mark and, accordingly, the two marks were similar in appearance, sound, meaning, and commercial impression. The TTAB likewise found that Applicant's and registrant's goods were identical in part, as both descriptions included wallets, handbags, and luggage, and closely related or directly competitive relative to the remaining listed goods. Because some of the goods in the application and registration were identical, and neither the registration nor the application contained any trade-channel restrictions, the TTAB presumed that the parties' trade channels were identical or overlapping. The TTAB rejected Applicant's argument that confusion was unlikely because consumers of handbags are sophisticated, noting that there were no restrictions or limitations in the description of Applicant's goods or the goods in the cited registration. Accordingly, the descriptions were broad enough to encompass inexpensive wallets, handbags, luggage, and traveling bags sold in discount stores to consumers who may not exercise a high degree of care. The TTAB likewise rejected Applicant's argument that its ownership of a registration for the identical mark for similar goods (namely, footwear) offered further support for registration. Noting that the issuance of the prior registration was not controlling, the TTAB held that it could not delegate its duty to decide an appeal from the final refusal to register by adopting the conclusion reached by another examining attorney on a prior record. Finally, the TTAB concluded that Applicant had failed to demonstrate that the SAM EDELMAN mark was famous in the fashion industry. Based upon all of these findings, the TTAB upheld the refusal of registration.
CONCLUSION
While commentators have long emphasized the public policy favoring the right of an individual to use and register his personal name, the TTAB, Federal Circuit, and other federal courts that have faced this issue have repeatedly found that such right is not unfettered. Accordingly, personal name marks are subject to the same likelihood-of-confusion analysis applied to other types of marks.
