Court blocks trademark for sports shop

March 20, 2019
Patterson Thuente IP

Registration of a trademark hinges, in part, on whether there is a likelihood of confusion with an earlier application or registration. In a recent case, a sports specialty shop learned that the trademark it sought for registration was considered likely to be confused with that of a private social club.

The players

Detroit Athletic Co. (DACo) is a sports specialty shop that sells souvenirs and apparel associated with Detroit professional teams. The Detroit Athletic Club (the Club) is a private men’s social club.

DACo sought to register the mark “Detroit Athletic Co.” for its retail services. A U.S. Patent and Trademark Office examiner refused to register the mark, finding it was likely to be confused with the Club’s mark “Detroit Athletic Club,” registered for clothing goods. The Trademark Trial and Appeal Board (TTAB) affirmed the refusal, and DACo appealed to the U.S. Court of Appeals for the Federal Circuit.

Official review

The TTAB generally turns to the 13 DuPont factors to determine whether a likelihood of confusion exists between marks. The appellate court considered the four factors the TTAB had deemed relevant:

  • Similarity of the marks,
  • Similarity and nature of the goods or services,
  • Similarity of trade channels, and
  • Actual confusion during concurrent use of the marks.

It concluded that these factors favored a finding of likelihood of confusion.

The marks were “nearly identical in terms of sound, appearance and commercial impression.” The court found it significant that the marks began with the same two words, “because consumers typically notice those words first.” This likeness weighed heavily in the court’s confusion analysis.

Although the goods and services associated with the marks weren’t identical, the appellate court found substantial overlap. The Detroit Athletic Club’s registration described clothing goods that were “very general” in nature and covered “all types of clothing,” including the clothing sold through DACo’s retail services.

The court also found the social club’s trade channels broad enough to encompass DACo’s trade channels. The Club’s registration contained no restrictions on the channels of trade or classes of customers, so its clothing was presumed to be sold in all normal trade channels to all normal classes of purchasers.

Finally, turning to evidence of a lack of actual confusion, the appellate court stressed that the relevant test is likelihood of confusion. DACo submitted an affidavit from a long-time customer, Internet search results, and online customer reviews for DACo and the Club. Thus, while evidence that consumers aren’t confused is relevant, it’s not decisive. Moreover, the court found DACo’s evidence on a lack of actual confusion to be insufficient.

Extra point

The court also dismissed DACo’s argument that the TTAB should have addressed every DuPont factor for which it offered evidence. The TTAB, it said, need not consider every factor but only those it finds dispositive. 

In re Detroit Athletic Co., No. 17-2361, Sept. 20, 2018, Fed. Cir.

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