IN RE MUDFLAP GIRL LLC, 77737574 (TTAB 3-24-2011)
Serial No. 77737574United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: March 24, 2011Page 1
Edward Allen for Mudflap Girl LLC.
David C. I, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney).
Before Quinn, Holtzman and Lykos, Administrative Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
Mudflap Girl LLC filed an application to register the mark MUDFLAP GIRL (in standard characters) (“GIRL” disclaimed) for “beachwear; briefs; camp shirts; caps; footwear; headwear; hooded sweat shirts; jeans; knit shirts; long-sleeved shirts; pique shirts; polo shirts; scarves; shorts; skirts and dresses; sport shirts; sweatPage 2
shirts; tee shirts; wearable garments and clothing, namely, shirts” (in International Class 25).[fn1]
The trademark examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. ? 1052(d), on the ground that applicant’s mark, when used in connection with applicant’s goods, so resembles the previously registered mark MUDFLAP BOY (in typed form)(“BOY” disclaimed) for “clothing, namely shirts, sport shirts, T-shirts, tank tops, sweat shirts, sweaters, blouses, jackets, coats, wind resistant jackets, hats, caps, jeans, chino-style pants, shorts, gloves, underwear, and footwear” (in International Class 25)[fn2] as to be likely to cause confusion.
When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs.
The essence of applicant’s argument is that there is no likelihood of confusion
because of the unique nature of the trademark, mainly the universal association of the words Mudflap Girl with an [sic] singular design image ? that of a reclining buxom woman’s silhouette; one with full hair, knees bent, toes pointed and arm extended to brace her position, seen on thePage 3
mudflaps of big rig trucks across the American landscape.
The applicant holds the trademark registration of this design image ? Registration No. 3742024 and 374025 [sic].
The consumers’ commonly held identification of the words Mudflap Girl with the applicant’s trademarked design image make it unlikely that the consumer would confuse the applicant’s product with any other.
(Brief, p. 1). Applicant’s registrations of its “Mudflap Girl” image for a variety of clothing items are shown below.
In connection with its claim that the image of the “Mudflap Girl” has become “part of the American consciousness, part of our cultural fabric,” applicant likens its mark to other examples where words call to mind a specific design image, such as Lady Liberty and Rosie the Riveter. Applicant goes on to assert that “given the strong identification [of] Mudflap Girl with the specific design image trademarked by the applicant and no cultural common reference for a clearPage 4
definition in the purchaser’s mind of a mudflap boy, it is not likely that the customer would believe [the respective goods] to be from the same source.” (Brief, p. 3). In support of its arguments, applicant submitted copies of its two prior registrations, photographs of the registered design marks in actual use, and depictions of the design images of Lady Liberty, Rosie the Riveter and others.
The examining attorney maintains that each mark is dominated by the MUDFLAP portion, and that the marks create similar commercial impressions. In response to applicant’s main argument, the examining attorney contends that the evidence of record does not establish that the consuming public makes an association between the words MUDFLAP GIRL and the “Mudflap Girl” image depicted in applicant’s registrations. With respect to the goods, the examining attorney first notes that applicant’s brief is silent as to this likelihood of confusion factor; in any event, according to the examining attorney, the clothing items are related and, in point of fact, are identical as to shirts, jeans, caps, footwear, t-shirts, sport shirts and sweatshirts.
Our determination of the issue of likelihood of confusion is based on an analysis of all of the probativePage 5
facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours Co.,476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Inre Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods.See Federated Foods, Inc. v. Fort Howard PaperCo., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first turn to consider the similarity between the goods. In considering this second du Pont factor, it should be noted at the outset that there is no per se
rule governing likelihood of confusion cases involving all types of wearing apparel, including footwear. See In re BritishBulldog, Ltd., 224 USPQ 854 (TTAB 1984). 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.[fn3]Page 6
As pointed out by the examining attorney, applicant does not dispute that its clothing items and registrant’s clothing items are related. Indeed, the examining attorney highlights the fact that the respective identifications of goods are identical with respect to the following items: shirts, sport shirts, T-shirts, caps, jeans, sweatshirts, shorts and footwear. Likelihood of confusion may be found based on any item that comes within the identification of goods in the involved application or registration. Tuxedo Monopoly, Inc. v. General Mills FunGroup, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Given that applicant’s and registrant’s goods are, in part, identical, or otherwise closely related, we presume that they travel in the same trade channels (e.g., clothing stores, department stores and the like), and that the clothing is bought by the same classes of purchasers. These classes would include ordinary consumers, who would be expected to exercise nothing more than ordinary care in making their purchasing decision.Page 7
The identity or otherwise close relationship between the goods, and the identity in trade channels and purchasers are factors that weigh heavily in favor of a finding of a likelihood of confusion.
We next turn to compare applicant’s mark MUDFLAP GIRL to registrant’s mark MUDFLAP BOY. We must consider the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. VeuveClicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the firstdu Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v.Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Finally, where, as in the present case, the marks are used on identical goods (at least in part), the degree of similarity between the marks that is necessary to support aPage 8
finding of likely confusion declines. Century21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Each one of the marks begins with the term MUDFLAP, followed by the generic designation GIRL or BOY that, in each instance, has been disclaimed. It is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re NationalData Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”).
In the present case, applicant has disclaimed “GIRL” and registrant has disclaimed “BOY.” Although we have compared the marks in their entireties, these non-distinctive disclaimed terms play subordinate roles in each of the marks. See Inre Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). Clearly, each of the marks is dominated by the identical arbitrary term MUDFLAP, that is, the first portion of each of thePage 9
marks, and is the portion that is most likely to be remembered and used by consumers in calling for and referring to applicant’s and registrant’s goods. Purchasers in general are inclined to focus on the first word or portion in a trademark, especially where the first word is followed by a generic term. Presto Products, Inc. v. Nice-Pak Products,Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is likely to be impressed upon the mind of a purchaser and remembered”). See Palm Bay Imports,Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692.
Given the commonality of the identical, arbitrary term MUDFLAP in each of the marks, we find MUDFLAP GIRL and MUDFLAP BOY to be similar in sound and appearance. Further, the difference between the uses of GIRL and BOY does not appreciably alter the meanings of the marks. These similarities result in marks that engender very similar overall commercial impressions.
The similarity between the marks weighs in favor of a finding of a likelihood of confusion.
Applicant’s principal point in arguing against a finding of likelihood of confusion is based on its claim that the words “Mudflap Girl” are universally associated with applicant’s design image of the “Mudflap Girl”Page 10
(reproduced earlier in this opinion) and that, therefore, no consumer would confuse the mark MUDFLAP GIRL with registrant’s mark MUDFLAP BOY. Applicant asks the Board to “grant this trademark and bring together that which is already one in the minds of the average American consumer ? `Mudflap Girl’ and the mudflap girl image.” (Reply Brief, p. 3).
Applicant’s argument is not persuasive. Firstly, other than applicant’s mere claim, there is no evidence of record to support the purported universal association in the minds of consumers. Secondly, and more importantly, our likelihood of confusion analysis is based on a comparison between the registered mark and the applied-for mark. Thus, notwithstanding any independent meaning that the words may have relative to the design mark, the comparison herein is confined to the word mark. Any number of consumers for clothing are undoubtedly unaware of the “Mudflap Girl” image and, thus, they would not even make the association claimed by applicant.
We conclude that consumers familiar with registrant’s clothing sold under the mark MUDFLAP BOY would be likely to believe, upon encountering applicant’s mark MUDFLAP GIRL for identical or closely related clothing items, that thePage 11
goods originated from or are associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.
[fn1] Application Serial No. 77737574, filed May 14, 2009, alleging first use anywhere on July 2, 2007, and first use in commerce on October 3, 2008. [fn2] Registration No. 2726926, issued June 17, 2003; Section 8 affidavit accepted. [fn3] Cambridge Rubber Co. v. Cluett, Peabody Co., 286 F.2d 623, 128 USPQ 549 (CCPA 1961) [women’s boots related to men’s and boys’ underwear]; Jockey Int’l, Inc.v. Mallory Church Corp., 25 USPQ2d 1233 (TTAB 1992) [underwear related to neckties]; In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991) [women’s pants, blouses, shorts and jackets related to women’s shoes]; In re Pix of America,Inc. 225 USPQ 691 (TTAB 1985) [women’s shoes related to outer shirts]; In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) [hosiery related to trousers]; In re CookUnited, Inc., 185 USPQ 444 (TTAB 1975) [men’s suits, coats, and trousers related to women’s pantyhose and hosiery]; and Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) [brassieres and girdles related to slacks for men and young men].