TTABlog Test: Is INDESTRUCTIBLE & Design for Shoes Confusable with INDESTRUCTIBLE & Design for Athletic Apparel?

The USPTO refused to register the mark shown below left, for "shoes," finding confusion likely with the registered mark shown below right, for "athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Athletic shirts; Body shirts; Button down shirts." Now, we know that there is no per se rule that various types of wearing apparel are related. Plus, the designs are different, and surely "indestructible" is a laudatory and weak term. How do you think this appeal came out? In re Indestructible Shoes LLC, Serial No. 88615185 (October 3, 2023) [not precedential] (Opinion by Judge Mark Lebow).

As to the goods, applicant's "shoes" encompass registrant's athletic "footwear." Moreover, third-party evidence established that shoes are related to "shirts." Since the involved goods are legally identical and since there are "no restrictions as to nature, type, channels of trade or classes of purchasers,” the those overlapping goods are "presumed to travel in the same channels of trade to the same class of purchasers." Therefore, the second and third DuPont factors weigh "heavily" in favor of an affirmance of the refusal.

Third-party registrations offered by applicant were non-probative because the registered marks either did not include the word INDESTRUCTIBLE or were for different goods. Moreover, registrations alone are not evidence of use of the marks or consumer familiarity with them.

The Board agreed that there is some weakness in the term INDESTRUCTIBLE, but "even weak marks are entitled to protection against registration of similar marks for identical or similar [goods]." Moreover, the word INDESTRUCTIBLE is not disclaimed in the cited mark.

Turning to the marks, the Board found them to be "similar in sight notwithstanding differences in their design features, and they are identical in sound and meaning." [Similar in sight? I don't see it. - ed.]

Applicant argued that purchasers of the involved goods will be "sophisticated" [Really? - ed.], but there was no evidence to support that argument. Applicant also pointed to the lack of evidence that the cited mark is famous, but the absence of proof of fame is irrelevant in the ex parte context. Next, applicant asserted that the likelihood of confusion was de minimis, but the Board disagreed. And finally, the Board observed that the lack of evidence of actual confusion carries little weight in an ex parte appeal, since there is no opportunity for the registrant to be heard.

And so, the Board affirmed the refusal. 

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Text Copyright John L. Welch 2023.