When it comes to trademark oppositions, it pays to be Kühl.
In Alfwear Inc. v. Shuff, the U.S. Trademark Trial and Appeal Board was asked to consider whether the Applicant’s KU:L and design trademark for bicycles in International Class 12 created a likelihood of confusion with Opposer’s asserted “family” of KUHL trademarks for inter alia, clothing, bottled water, textile fabrics, lip balm and other items. Of interesting note is that Opposer’s trademark registrations on which it had relied to constitute a family consisted of multiple variants of the English translation of “cool,” including KUHL, KÜHL, and KUUL.
Family of trademarks. The Federal Circuit has defined a family of trademarks as a group of marks having a recognizable common characteristic; however, simply using a series of similar marks does not a family make for purposes of protection. Instead, there must be a recognition among the relevant consuming public that the marks are indicative of a common origin, which is generally established by considering the use, advertising, and distinctiveness of the marks as a whole. Here, the Opposer introduced evidence that showed that although it used multiple spellings of its “Kühl” mark, it did not establish sufficient proof that it had extensively used all of them in commerce, and in particular, “Kuul” and “Kuhl,” such that it created a family of trademarks.
Likelihood of Confusion. While there are at least 25 separate grounds that an Opposer may assert for the basis of a trademark opposition, by far, the most prevalent is likelihood of confusion pursuant to Section 2(d) of the Trademark Act. In determining whether a likelihood of confusion exists under Section 2(d), the Board looks to several factors, with two key considerations being the similarities between the marks and the similarities between the goods or services. In comparing the similarities between the marks, the Board, unsurprisingly, noted that closeness in spelling between the parties’ marks, and also concluded that consumers were likely to pronounce the two marks similarly. In analyzing the similarity of the parties’ goods, the Board concluded that since there was ample evidence introduced of third-party party registrations and websites offering both bicycles and outdoor apparel together, this tended to support the conclusion that the Opposer’s and Applicant’s goods were similar. The TTAB went on to find that since the parties’ goods were offered in the same channels of trade to consumers who exercise a low degree of purchasing care, confusion was likely such that the Opposition was sustained in favor of Opposer.
Practitioner’s Note: Opposer was unsuccessful in convincing the Board that its “Kühl” marks were famous, despite the fact that it sells its products bearing the Kühl mark in over 1,0000 retail outlets nationwide. This is due to the fact that Opposer’s introduction of advertising and sales figures alone did not provide context as to the level of exposure and recognition that consumers might have had to the Kühl trademark in order for it to be considered famous. The Kühl mark, was, however, deemed to be strong for purposes of the Section 2(d) likelihood of confusion analysis.