Opposition won, but no 'family of marks' status for PERRY ELLIS

In PEI Licensing Inc v Ellis, the US Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) has upheld an opposition to the registration of ELLIS BLACK as a trademark for various articles of clothing.

PEI Licensing Inc, a company owned by Perry Ellis International, holds the rights in PERRY ELLIS marks for a wide range of clothing products. It opposed registration of the mark ELLIS BLACK by designer Stacey Ellis for a clothing line designed specifically to fit the African American body. The TTAB sustained the opposition holding that consumers, upon seeing ELLIS BLACK on identical or closely related items of clothing to those produced by Perry Ellis, were likely to believe that Perry Ellis was using ELLIS BLACK as a variation of its famous PERRY ELLIS marks.

The decision on the merits is not surprising, given the fame of the Perry Ellis brand, and the identity of the goods, channels of trade and consumers. What is surprising is the TTAB's refusal to grant 'family of marks' status to the numerous PERRY ELLIS registrations and applications for PERRY ELLIS combination marks on the grounds that "opposer has not submitted any evidence to demonstrate that it has promoted its marks together, such that we can find that it has a family of PERRY ELLIS marks". The TTAB also found that while the PERRY ELLIS marks were "strong" marks, the evidence, which consisted of an affidavit from a Perry Ellis executive, fell short of establishing fame as the affidavit did not:

• identify which PERRY ELLIS marks had been in continuous use since January 1977;
  
  
• provide exhibits showing sample advertisements in support of advertising expenditures claimed; and
  
  
• link sales figures to specific goods sold under the PERRY ELLIS marks at issue.

PEI's failure of proof on the fame issue could have proved fatal if the marks and goods at issue had not been so close.

Virginia R Richard, Winston & Strawn LLP, New York