IP Law Daily, TRADEMARK—TTAB: Registration of RESISTOR mark for boots refused due to similarity with RESISTER and REZISTR, (Jun 9, 2022)

By Ursula Furi-Perry, J.D.

After reviewing the DuPont factors, the Board noted that confusion between the mark and two previously registered other marks was likely.

An applicant’s registration of the mark RESISTOR for boots in International Class 25 was refused by the Trademark Trial and Appeal Board based on the likelihood of confusion with the prior registrations of the marks RESISTER and REZISTR for various items of clothing. The Board found that confusion was likely, as the contested mark and the cited marks were similar, the respective goods were related, and the trade channels overlapped (In re Boot Royalty Company, L.P., June 7, 2022, Goodman, C.).

The applicant sought to register the mark RESISTOR, in standard characters, in connection with “boots” in International Class 25. The trademark examining attorney refused registration on the grounds of likelihood of confusion with the mark RESISTER in “Hoodies; T-shirts; Tanktops” in International Class 25 and the registered mark REZISTR for use with “Clothing, namely t-shirts, sweaters, sweat-shirts, shirts, pants, jeans, skirts, vests, jackets, belts, hats” in International Class 25, owned by different individuals. After a request for reconsideration was denied, the applicant appealed.

The TTAB reviewed the DuPont factors in analyzing the probative evidence of record bearing on a likelihood of confusion.

Similarity of the marks. Looking at the three marks in their entirety, the TTAB found them to be similar in sound and appearance. Both of the cited marks were stylized, while the applicant’s mark was in standard characters, and as such, it was not limited to any particular font, size, style, or color and could appear in the same font and stylization as the cited marks, the Board stated.

Regarding the REZISTR mark, the TTAB rejected the applicant’s argument that its stylized font and backwards letter made it significantly different from the applicant’s mark. The TTAB also rejected the argument that the word “sister” in the mark RESISTER was the main focus, making it sufficiently different from the contested mark. The TTAB found it more likely that the public would view the mark as a unitary term, “resister,” rather than as having a dominant feature in the suffix portion of the mark. The Board found that both marks were visually similar, in that the only difference between the marks was the final vowel, as well as phonetically equivalent.

Similarity of the goods. On this factor, the Board found that the applicant’s “boots” and the registrants’ clothing goods were related, particularly given the reduced degree of similarity between the goods that is necessary for confusion to be likely, since the goods would be offered under nearly identical marks. The Board pointed to the examining attorney’s website evidence of third-party clothing retailers and boot retailers offering various clothing items and boots. The TTAB rejected the applicant’s argument that evidence is less probative because the evidence consists of house marks. It found the good related, noting that consumers are accustomed to seeing boots, footwear, and clothes sold under the same mark, which in turn increases the likelihood of confusion.

Similarity of trade channels. The Board found that the channels and classes of customers plainly overlapped between the contested mark and the two registered marks. It rejected the applicant’s argument that boots and clothing were not sold in the same brick-and-mortar stores, noting that the two are sold together on the websites of clothing companies, and have been registered under a single mark by numerous apparel businesses, supporting a finding of overlapping trade channels.

The registration refusal was affirmed by the Trademark Trial and Appeal Board.

The case is Serial No. 90069720.

Attorneys: David Chen and John Keller (IP Attorneys Group LLC) for Boot Royalty Company, L.P. Patrick Carr for USPTO.

Companies: Boot Royalty Company, L.P.

Cases: Trademark USPTO