SAM EDELMAN is confusingly similar to EDELMAN, says TTAB
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In In re SL&E Training Stable Inc (Case 78806669, September 4 2008), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has affirmed a refusal to register the mark SAM EDELMAN for goods in Class 18 of the Nice Classification on the grounds that there was a likelihood of confusion with the registered mark EDELMAN for Class 18 goods.
Edelman Shoe Company LLC filed an intent-to-use application for the registration of the mark SAM EDELMAN for “luggage, handbags, purses, wallets, all-purpose tote bags, all-purpose sports bags and backpacks” in Class 18. The examining attorney refused registration under Section 2(d) of the Lanham Act on the grounds that the mark applied for was likely to cause confusion with the registered trademark EDELMAN for “wallets, handbags, travelling bags, luggage trunks, umbrellas, harnesses and saddlery; animal skins and hides; tanned leather adapted for use in upholstering furniture, namely seating for use in airplanes, cars and other vehicles” in Class 18.
First, Edelman contended that there was no likelihood of confusion because there is a strong public policy to allow individuals to use their surnames. In addition, Edelman argued that this public policy should be especially applied in cases where the individual has a reputation in connection with his or her surname. Edelman submitted seven articles as evidence that the name Sam Edelman is well known in the fashion industry. However, the TTAB was not convinced by this evidence. Furthermore, it determined that the degree of recognition of a surname in the industry does not diminish the likelihood of confusion.
Edelman also contended, on the strength of two third-party cases, that the purchasers of handbags are sophisticated individuals and could distinguish between the two marks. However, Edelman failed to provide any supporting evidence and the TTAB rejected this argument. Although the TTAB agreed that Sam Edelman was the name of an individual, this did not give Edelman an unfettered right to use that name if it conflicted with a previously registered mark.
The TTAB then reviewed the unrestricted list of goods covered by the marks and presumed that they would travel in the same channels of trade and be offered to similar consumers. Furthermore, the TTAB held that the surname Edelman was the prominent element of both the registered mark and the mark applied for. The TTAB concluded that consumers could view the trademark EDELMAN as an abbreviated version of the SAM EDELMAN mark, supporting its holding that there were strong similarities between the marks in terms of appearance, sound, connotation and commercial impression.
Second, Edelman pointed to its prior registration for SAM EDELMAN for footwear and contended that these goods were closely related to the products identified in its application. Therefore, the prior registration justified the registration of the mark at issue. Citing In re Sunmarks Inc (32 USPQ2d at 1472), the TTAB highlighted that:
"[it should] not be barred from examining the registrability of a mark when an applicant seeks to register it for additional goods, as it does here, even when the additional goods are closely related to those listed in a prior registration."
The TTAB confirmed its obligation to decide an appeal from a final refusal to register. This obligation is distinct from an earlier conclusion reached by another examining attorney on a different record.
The TTAB balanced the relevant factors under In re EI du Pont de Nemours & Co (476 F2d 1357) and found that confusion was likely. Consequently, it affirmed the refusal to register.
Raquel E Ronisky, Rothwell Figg Ernst & Manbeck PC, Washington DC
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