TTAB: The early, CURVY bird gets the worm; later applicant seeking registration of CURVEY, CURVEE, CURVEEY out of luck

Posted by Charles Colman

Decision Of The Day: In re Apparel Limited, Inc., Serial Nos. 85141163, 85141193 and 85141214 (T.T.A.B. Oct. 2, 2012) (non-precedential). This is an instructive, apparel-related decision from the Trademark Trial and Appeal Board concerning the interaction of trademark law's rules on priority, likelihood of confusion, and "mere descriptiveness" in the prosecution process. Key excerpts from the opinion (embedded below):

 

"The trademark examining attorney refused registration in each application [for CURVEY, CURVEE, and CURVEEY] under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant's mark, when applied to applicant's goods, so resembles the previously registered mark CURVY (in standard characters) for 'clothing, namely, shirts, fitted tops, jackets, trousers, skirts, chemises, pajamas, nightgowns, camisoles, short robes, night shirts, long wraps, bath robes; swimwear and underwear' (in International Class 25) as to be likely to cause confusion....

 

[Ed. Query whether the specimen accompanying the Declaration of Continued Use submitted earlier this year by the owner of the CURVY registration does, in fact, show use of the word as a trademark.] 

 

Insofar as likelihood of confusion is concerned, applicant argues that the cited mark is extremely weak 'as it is descriptive of clothes designed for larger busts.' (Brief, p. 2).  In this regard, applicant asserts that the term 'curvy' is ubiquitous in the marketplace and, therefore, consumers are conditioned to look to other elements as a means of distinguishing the source of the goods in the clothing field....

 

Based on the evidence of record, we find that the proposed marks are merely descriptive of a significant characteristic or feature of applicant’s clothing. No imagination is required by a purchaser or user to discern that the marks, when applied to the goods, describe 'curvy' clothing or clothing directed to 'curvy' individuals. A slight misspelling of a merely descriptive word, such as 'curvy,' does not turn the descriptive word into a non-descriptive mark....

 

The identity or otherwise close relationship between the goods, and the presumed identity in trade channels and purchasers are factors that weigh heavily in favor of a finding of a likelihood of confusion [among consumers, regarding the sources of goods associated with all marks at issue]....

 

[W]e appreciate applicant’s principal argument grounded on the weakness of registrant’s mark, and the proposition that the mark is entitled to a narrow scope of protection, especially given that the cited mark is registered on the Supplemental Register.... [However,] even a weak mark is entitled to protection against the registration of a similar mark for closely related goods or services.... Indeed, even marks that are registered on the Supplemental Register may be cited under Section 2(d)....

 

In reaching our decision, we have kept in mind that there is no per se rule governing likelihood of confusion cases involving all types of wearing apparel.... However, in numerous cases in the past, many different types of apparel have been found to be related products which are sold in the same trade channels to the same classes of purchasers, including to ordinary consumers, and that confusion is likely to result if the goods were to be sold under similar marks. To state the obvious, we have decided this appeal based on the specific evidence before us, and not on any rule.

 

We conclude that consumers familiar with registrant’s 'clothing, namely, shirts, fitted tops, jackets, trousers, skirts, chemises, pajamas, nightgowns, camisoles, short robes, night shirts, long wraps, bath robes; swimwear and underwear' sold under the mark CURVY would be likely to mistakenly believe, upon encountering any of applicant’s marks CURVEE, CURVEY and CURVEEY for 'clothing, namely, pants, denims, capri pants, cargo pants, shorts, skirts, skorts, [and] active wear, namely, jogging outfits,' that the goods originated from or are associated with or sponsored by the same entity.... [As such, the applicant for the latter marks was properly denied registration by the Trademark Examiner.]"