IP Law Daily, TRADEMARK—TTAB: Puma’s PWRSHAPE for athletic clothing denied registration, (Sep 19, 2023)

By George Basharis, J.D.

TTAB found the proposed mark was confusingly similar to the registered POWERSHAPE mark for bras.

The standard-character mark PWRSHAPE for jackets, shirts, sweaters, and coats was confusingly similar to the registered marks POWERSHAPE for bras and POWERSHAPERS for hosiery, the Trademark Trial and Appeal Board has decided. The Board found that the marks were similar, that the associated goods were related and likely to be sold through the same channels of trade to the same classes of consumers, and that consumers would likely confuse the marks, even in the presence of third-party registrations. Because the remaining confusion factors were found to be neutral, the refusal by the Trademark Examining Attorney to register was affirmed (In re: Puma SE, August 29, 2023, Larkin, C.).

Puma sought registration of PWRSHAPE, in standard character form, for “clothing, namely, pants, skirts” and “clothing, namely, pullovers, jackets, shirts, T-shirts, sweaters, and coats” in International Class 25. The Trademark Examining Attorney refused registration based on a likelihood of confusion with the registered standard character marks POWERSHAPE and POWER SHAPE for “bras” and “brassieres” and POWERSHAPER for “hosiery and pantyhose” in International Class 25. Puma appealed.

DuPont factors. The Board conducted a likelihood of confusion analysis that focused on the similarity of the marks, goods, channels of trade, and classes of consumers; the sophistication of the relevant consumers; and the number and nature of third-party uses of similar marks. The Board limited its analysis to comparing the proposed mark with the registered POWERSHAPE mark for bras, explaining that the POWERSHAPE mark had the most points in common with the proposed mark and that a finding of confusion with respect to that mark would obviate the need to find confusion with the other registered marks, or vice versa.

The Board found that three of the five DuPont factors supported the Trademark Examining Attorney’s finding that confusion was likely while the remaining two factors were neutral. According to the Board, based on the record, consumers familiar with the POWERSHAPE mark for bras who separately encountered the PWRSHAPE mark for t-shirts were likely to believe that the goods had a common source.

Puma argued that PWRSHAPE and POWERSHAPE were dissimilar in appearance, sound, connotation, and commercial impression because PWRSHAPE was a unitary mark whereas POWERSHAPE was comprised of two separate terms, “power” and “shape.” The Examining Attorney, on the other hand, noted that PWR was simply an abbreviation of POWER. The Board agreed and found the marks to be “far more similar than dissimilar” in appearance and observed that even Puma admitted that the use of the term “power” alluded to the idea that clothing can make the wearer feel strong and confident. The Board also found that a reasonable pronunciation of PWRSHAPE was “power shape,” therefore making the marks identical in sound.

Puma further argued that the goods associated with the marks were dissimilar in nature and function. However, the Examining Attorney provided third-party registration evidence that it was common for companies to sell both bras and t-shirts under the same marks. In fact, Puma included sport bras, which are intrinsically related to underwear, in its original application. The Board found the third-party use evidence, bolstered by Puma’s own application, was sufficient evidence of relatedness under DuPont to support a finding of confusion.

Although undergarments are typically sold in different departments of stores that sell clothing, Puma’s application did not limit the channels of trade or classes of consumers for the goods identified in its application. As a result, the Board presumed the associated goods traveled in all channels of trade to ordinary consumers of both bras and T-shirts but found this factor to favor a finding of confusion only slightly.

The record contained hundreds of third-party registrations and applications that incorporated the term POWER or the term SHAPE in connection with clothing. However, none of the registrations contained both POWER and SHAPE. At most, the third-party registrations established that “power” and “shape” could be suggestive of various items of clothing; therefore, the factor was neutral. Similarly, there was no evidence that potential consumers of t-shirts and bras would exercise anything more than ordinary care in purchasing the goods. Consequently, this DuPont factor too was neutral.

The Case is Serial No. 90600590.

Attorneys: Xheneta Ademi (Quarles & Brady LLP) for Puma SE. Kim Teresa Moninghoff for the USPTO.

Companies: Puma SE

Cases: Trademark USPTO