Disclaimer requirement of 'toggs' affirmed by TTAB

In In re Ginc UK Limited (Serial 78618843, September 4 2007), the US Patent and Trademark Office's (USPTO) Trademark Trial and Appeal Board (TTAB) has dismissed the application filed by Ginc UK Limited to register the trademark ZOGGS TOGGS for clothing (namely swimsuits, swim caps, warm-up suits, t-shirts, jackets and wet suits).

Ginc manufactures clothing and apparel, primarily for use in connection with swimming and other water sports. The USPTO examining attorney refused to register the mark ZOGGS TOGGS on the following grounds:

• the term 'toggs' should be disclaimed because of its merely descriptive nature;
  
  
• The proposed mark was too similar to the previously registered mark ZOG (and design) for various clothing articles, including swimsuits, wet suits and t-shirts.

The disclaimer requirement was premised upon the examining attorney's conclusion that the term 'toggs' was merely a misspelling of 'togs', a term recognized as meaning 'clothing' in dictionary references, prior third-party registrations and at least one prior USPTO decision. In view of the list of goods set forth in the application, the examining attorney concluded that the term was merely descriptive and thus required a disclaimer. Ginc sought to convince the examining attorney - and subsequently the TTAB - that the misspelling of the term overcame its descriptive nature and elevated it to a suggestive term. Neither the examiner nor the TTAB were persuaded; the TTAB found that "the term 'toggs' is the phonetic equivalent of 'togs', and as such it is an equally generic term for Ginc's goods".

Ginc also argued that the disclaimer requirement was misplaced because the "two elements of its mark are so merged together that they cannot be divided to be regarded as separable elements". The basis for this argument was that the two elements of the mark, although not physically merged, were such that they created a unique sound pattern, resulting in a "unitary whole through its distinct rhyming pattern, which creates a distinctive commercial impression". Although creative, the argument was unsuccessful. Even though the TTAB found that the words 'zoggs' and 'toggs' clearly rhyme, it concluded that:

"the rhyming quality imparts no new or different meaning to TOGGS apart from its meaning as a generic term for clothing. In other words, there is nothing in the composite mark ZOGGS TOGGS either visually or conceptually which causes the word 'toggs' to lose its ordinary meaning as a generic word."

The TTAB pointed out that while there are situations where combining a descriptive word with another word can result in a new, unitary mark not requiring a disclaimer of the otherwise descriptive term, such a mark is considered unitary only "where the combination of terms results in a separate and distinct meaning or commercial impression apart from or in addition to the descriptive meaning".

Addressing the second portion of the refusal to register - likelihood of confusion under Paragraph 2(d) the Lanham Act - the TTAB explained that although the ZOGGS TOGGS mark and the cited ZOG registration had obvious differences, when compared in their entireties the marks were "similar in sound, appearance, meaning and commercial impression, and... the similarities in the marks far outweigh their differences". The TTAB noted that where one portion of a mark is descriptive or generic (as in this case with respect to the term 'toggs'), it is appropriate to view the other term as the more source-indicating of the two. This, combined with the fact that the word portion of the cited registration ('zog') was to be afforded more weight than the design element, provided ample support for the conclusion that the marks as a whole were confusingly similar.

The TTAB thus held that:

"[there are] no differences in the marks which would be sufficient to cause purchasers to assume that ZOG when used for clothing has one meaning, while the virtually identical term ZOGGS when used on the same goods has another."

The TTAB went on to hold that the "completely unique nature" of the term 'zog' in connection with clothing "not only entitles the registered mark to a broad scope of protection, but significantly increases the likelihood that the marks, when used in connection with the identical goods, would cause confusion".

In an effort to save its application, Ginc also argued that registration was appropriate because:

• it owned a registration for ZOGGS TOGGS for different goods; and
  
  
• it had previously owned a registration for the mark for goods identical to the goods of the present application.

In fact, the cited ZOG registration had been registered over Ginc's prior registration for the same goods. Addressing these points, the TTAB easily did away with the argument that Ginc owned a registration for different goods, holding that "[t]he fact that Ginc may have obtained a registration for different goods has no bearing" in this case. On the issue of the cancelled registration, the TTAB explained that it was not bound by the decision of a prior examining attorney in another matter and was not willing to use that prior decision to countenance an error in registering the present mark.

Timothy J Kelly, Fitzpatrick Cella Harper & Scinto, New York