IP Law Daily, TRADEMARK—TTAB: Identical CLICKS marks for clothing, retail store services likely to be confused, (Jul 13, 2018)

By Thomas Long, J.D.

A proposed standard-character mark CLICKS, for retail store services featuring clothing, was likely to be confused with the registered standard-character mark CLICKS, for goods including gloves, hats, ponchos, rain boots, raincoats, scarves, and socks, the Trademark Trial and Appeal Board has determined. The applied-for and registered marks were identical, the applicants’ services and the registrant’s goods were related, and the trade channels overlapped. In addition, certain goods sold by the registrant at low prices—particularly socks and gloves—were subject to impulse purchases, making confusion more likely, in the Board’s view. A USPTO examining attorney’s refusal to register the applicants’ mark was affirmed (In re McDaniels, July 10, 2018, Zervas, A.).

Applicants Darryl McDaniels and Erik Blamoville conceded that their CLICKS mark was identical to the registered CLICKS mark in sound, look, and appearance. The similarity of the marks weighed heavily in favor of finding a likelihood of confusion, the Board said. With respect to the goods and services associated with the marks, the Board noted that confusion may be likely to occur from use of the same or similar marks for goods and for services involving those goods. The registrant’s goods were the types of items that would be offered for sale in retail stores featuring clothing and apparel. Moreover, evidence of third-party registrations showed that clothing store services and clothing could have a common source or origin. The examining attorney also supported the refusal to register by introducing evidence of examples of clothing retailers that offered clothing under the same mark, including the Columbia, Talbots, and L.L. Bean brands.

The Board presumed that the registrant’s goods and the applicants’ retail store services were marketed in all normal trade channels for such goods and services and were offered to all normal classes of purchasers. Because of the close relationship between retail stores and clothing, the applicants’ services constituted a trade channel through which the registrant’s goods traveled. At least some of the applicants’ customers were part of the general consuming public for the registrant’s goods, the Board said. There was nothing in the identifications of goods and services in the relevant registration and application to indicate that the applicants’ sales were limited to customers who wished to shop in person and not online, whereas the registrant primarily aimed its goods at online shoppers.

The Board rejected the applicants’ argument—which lacked evidentiary support—that consumers of the registrant’s goods were sophisticated and knowledgeable about the brands and companies they chose to patronize. There was nothing inherent in the registrant’s goods that would set their price point at a level giving rise to an assumption that consumers would exercise particular care in making purchasing decisions. Moreover, the evidence showed that socks and gloves were sold at retail establishments for relatively low prices and therefore were subject to impulse purchases, making confusion between highly similar marks more likely. Accordingly, the Board concluded that the du Pont factors weighed in favor of a finding of likely confusion, and affirmed the examining attorney’s refusal to register the applicants’ CLICKS mark.

This case is Serial No. 86283711.

Attorneys: Phillip Thomas Horton (Phillip Thomas Horton, Attorney at Law) for Darryl McDaniels and Erik Blamoville. Kaelie E. Kung for the USPTO.

Cases: Trademark USPTO