IP Law Daily, TRADEMARK—TTAB: ‘GREAT LAKES GREAT TIMES NO SHARKS’ mark for clothing items denied registration, (Feb 12, 2024)

By Saurabh Kashyap, B.A., LL.B.

The Board agreed with the Trademark Examining Attorney and affirmed refusal based on the likelihood of confusion with the pre-existing ‘NO SHARKS’ trademark.

In a non-precedential decision, the Trademark Trial and Appeal Board (TTAB) affirmed the refusal to register Graphite Design + Build Limited's (Applicant) proposed trademark GREAT LAKES GREAT TIMES NO SHARKS (standard characters, “Great Lakes” disclaimed). Upon analysis of the factors enshrined in E.I. du Pont de Nemours & Co., the Board ruled that the proposed trademark was likely to cause consumer confusion with the existing registration for the mark NO SHARKS (standard characters) for overlapping goods (In re Graphite Design + Build Limited , January 23, 2024, Larkin, C.).

Background. The Applicant sought to register the trademark GREAT LAKES GREAT TIMES NO SHARKS for clothing items such as hats, shirts, and sweatshirts on the Principal Register in International Class 25. The application, submitted on September 21, 2021, under Section 1(a) of the Trademark Act, was based on the Applicant's claim of first use in commerce as early as September 1, 2021. However, the Trademark Examining Attorney refused registration, citing a likelihood of confusion with the existing NO SHARKS trademark, which is registered for closely related goods. When the Examining Attorney made the refusal final, Applicant appealed and requested reconsideration, which was denied. The Applicant proceeded with the appeal upon denial of reconsideration.

Du Pont factors. The TTAB's ruling was based on analysis of the duPont factors with a particular focus on the resemblance between the proposed GREAT LAKES GREAT TIMES NO SHARKS mark and the existing NO SHARKS registration, taking into account the nature of the goods involved and the channels of trade and classes of consumers.

Similarity of goods. The TTAB's analysis involved identifying identical items covered by both trademarks. The overlap in product categories—particularly "hats," "shirts," and "sweatshirts"—highlighted the possibility of consumer confusion. The Board reasoned that because the commodities are the same, consumers may mistake them for the same source, a premise reinforced by precedents such as In re Mighty Leaf Tea, which underlines the importance of identical goods in the likelihood of confusion analysis.

Similar marks in use. The Board looked at the market environment, specifically the prominence of "SHARK"-related trademarks. Despite Graphite Design + Build Limited's concerns about the diluted impact of shark-related motifs in clothing trademarks, the TTAB found insufficient evidence to mitigate the distinctiveness of the NO SHARKS mark. This examination was based on principles established in decisions like In re Thor Tech, Inc., which held that the presence of identical marks did not automatically reduce the strength of a mark unless considerable evidence of marketplace usage was demonstrated.

Similarity between the marks. The TTAB next compared the marks. Despite the additional aspects in Graphite's mark, the Board determined that including the complete "NO SHARKS" phrase could cause consumer confusion. This ruling follows the reasoning in In re Chevron U.S.A. Inc., where the TTAB highlighted that adding descriptive or generic phrases to a registered mark does not always prevent misunderstanding.

The TTAB additionally found that the prefix "GREAT LAKES GREAT TIMES" had no substantial impact on the commercial impression provided by the component "NO SHARKS." This approach followed the precedent established in In re Opus One Inc., where the addition of region-specific descriptions was judged insufficient to differentiate the trademarks.

Conclusion. Emphasizing the necessity of analyzing proposed trademarks in light of existing registrations, especially when the proposed mark comprises an entire previously registered mark, the TTAB affirmed the refusal to register the GREAT LAKES GREAT TIMES NO SHARKS mark.

The Case is Serial No. 97037355.

Attorneys: Michael E. Dockins (Shumaker, Loop & Kendrick, LLP) for Graphite Design + Build Ltd. Clinton Johnson for the USPTO.

Companies: Graphite Design + Build Ltd.

Cases: Trademark USPTO