A recent trademark opposition found no likelihood of confusion between two apparel trademarks.

In Garan Incorporated and Garan Services Corp. v. Manimal LLC , the Opposer is the owner of the well-known GARANIMAL brand of children’s clothing.  The applicant sought registration of the mark MANIMAL for a wide variety of men’s women’s and children’s clothing, including shirts and pants.  In its notice of trademark opposition, the Opposer relied on eight trademark registrations for its GARANIMAL Mark.

In determining whether a likelihood of confusion existed between the parties’ marks, the Board compared the Opposer’s mark most similar to Applicant’s mark for in part identical goods.  This was Registration No. 0954125 of the mark GARANIMAL for “children’s shirts and pants.”   If the opposition could not be sustained based on this mark (which as closest in its identification of goods to the Applicant’s goods), then the opposition would not be successful for any of the other registrations.  The Board proceeded with its analysis of the likelihood of confusion factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)  (the “DuPont factors.”).  Two key considerations are the similarity of the marks and similarity of goods.  In this case, the Board analyzed the similarity of the marks last.

1.  Similarity of the goods.  It is sufficient for finding a likelihood of confusion that Opposers establish that any item encompassed by the identification of goods within a particular class in the application and registration are related.  Since the Applicant’s goods encompassed in part Opposer’s goods, this factor weighs in favor of the Opposer.
2.  Similarity of channels of trade and class of consumers.  Because the goods described in the application and Opposers’ registration both encompass shirts and pants, they are therefore legally identical in part.  In such situations, the Board presumes that the channels of trade and classes of purchasers are the same.  This factor weighs in favor of the Opposer.
3.  Length of time without actual confusion.  Here, the absence of any reported actual confusion was not highly persuasive because the Applicant’s use of its mark was not appreciable and continuous.  Moreover, since the use was not in the same markets, there was not a reasonable opportunity for confusion to occur.
4.  Strength of opposer’s mark.  The fifth DuPont factor enables Opposers to expand the scope of protection afforded its pleaded mark by adducing evidence of the fame of its mark.  This is shown by sales, advertising, and length of use.  The sixth factor, which is related, affords Applicant the opportunity to restrict the Opposer’s evidence of strength by adducing evidence of the number and nature of similar marks on similar goods that already exist.  To determine strength (the fifth factor), the Board looks at the mark’s inherent strength based on the nature if the mark itself, and its commercial strength, based on its marketplace recognition.  The latter is analyzed at the point that the Opposer’s mark is asserted in litigation to prevent the Applicant’s use.   Here, the Board concluded that the GARANIMAL Mark was inherently distinctive and original for purposes of strength.  It further concluded that commercial sales of goods and advertising under the mark have been substantial since it was first introduced in 1972.
5.  Similarity or dissimilarity of the marks.   This factor looks at the similarity of both marks in terms of sight, sound, and commercial impression.  Where, as here, the goods are similar, then the degree of similarity between the marks need not be as great for purposes of finding a likelihood of confusion.  Here, the Board found that the Applicant’s mark was sufficiently different than the Opposer’s in part because the Opposer placed the letter “m” before “animal” to create a combination of “man” and “animal.”  This together with third-party registrations of marks for apparel that contained the word “animal” made the Board conclude that the marks were dissimilar.

Conclusion:   In trademark opposition proceedings, one DuPont factor may be dispositive and outweigh all others.  This is particularly true when the factor is the similarity of dissimilarity of the parties’ marks.  Using this reasoning, the Board therefore concluded that there was no likelihood of confusion between Applicant’s MANIMAL mark for clothing with Opposer’s GARANIMAL mark for clothing.

 Key takeaway:  It is important to note that the Board is limited to the identification of goods set forth in the applicant and the Opposer’s registration in its comparison of certain DuPont Factors.  These factors are  the similarity of the goods, similarity of the channels of trade, and class of consumers.  It may not consider how the parties actually use their goods in the marketplace in assessing these factors.  The similarity of the marks and similarity of the goods factors are often given added weight over all others.