In a recent decision under Section 2(d) of the Trademark Act, the United States Trademark Trial and Appeal Board analyzed what factors make a trademark arbitrary and strong for purposes of a likelihood of confusion analysis.  Indigo Star, Inc. and H2d Properties, Inc. v. Patti’s Enterprises, L.L.C.

Applicant filed two applications for the trademark THE PINK TRACTOR (one in words and the other a design mark) for ” retail store services featuring a wide variety of women’s clothing, apparel, footwear, fashion accessories, and jewelry”  in international class 35.   Opposer, H2d Properties, Inc.  filed notices of opposition against registration of applicants marks based on  a likelihood of confusion with Opposer’s TRACTOR BRAND JEANS® and TRACTOR® marks for men’s, women’s, children’s clothing in International Class 25.

In its likelihood of confusion analysis, the Board first considered whether the marks were similar  in sound, appearance, meaning, and commercial impression.  For comparison purposes, the Board used Opposer’s TRACTOR word mark (not its TRACTOR BRAND JEANS mark) to evaluate with Applicant’s THE PINK TRACTOR marks.  The Board found that the “tractor” portion of  opposer’s mark was the dominant portion, further indicating that the term tractor did not have any significance with regard to clothing or retail services; thus the registered mark was considered to be arbitrary and strong.   This conclusion was further supported by the fact that the term “pink”  in applicant’s mark was admitted by applicant to be suggestive of a color for girl’s clothing.

The Board went on to state that goods can also be held to be confusingly similar to related services, and that a goods-to-goods comparison is not always required:

We have often held that confusion is likely where one entity uses a mark for goods and another uses the same or a similar mark for a retail store that sells such goods.

(citing cases that made such a finding with regard to general merchandise stores and furniture and women’s clothing stores and cosmetics).

Although the Applicant did not present any evidence at trial, the board raised the important legal issue that in a trademark opposition proceeding, the Opposer always bears the burden of proof to establish its claims by a preponderance of the evidence.  This serves as an important reminder that brand owners and trademark attorneys should always be sure that each and every element of its case-in-chief has adequate factual and evidentiary support.