TTAB decision shows that it pays to have prior US federal registration

United States of America
In In re Strategic Partners Inc (Serial No 77903451, March 28 2012), in a unusual fact pattern, the US Trademark Trial and Appeal Board (TTAB) has confirmed the benefit of owning a prior US registration for a substantially identical mark. 
Strategic Partners Inc (SPI) filed to register ANYWEAR for “footwear”. The applied-for mark appeared in a stylised design as follows:

SPI owned an earlier registration for an ANYWEARS mark that covered footwear (the term 'shoe company' in the tag line 'By The Anywear Show Company' was disclaimed):

SPI's earlier ANYWEARS registration had existed on the Principal Register for more than five years. However, SPI did not file a Section 8 affidavit of continued use and its ANYWEARS registration was cancelled. Regardless, SPI's application for the stylised ANYWEAR mark properly included a claim of ownership of the earlier SPI registration.

The US Trademark Office rejected SPI's application for ANYWEAR based on an existing registration for ANYWEAR BY JOSIE NATORI as used for a variety of clothing. The cited mark appeared as follows:

SPI's earlier ANYWEARS registration had coexisted with the cited ANYWEAR BY JOSIE NATORI registration for many years. The issue presented was therefore how to assess the facts that SPI already owned a registration for a substantially similar mark for identical goods, and that SPI's earlier ANYWEARS registration and the cited registration (ANYWEAR BY JOSIE NATORI) had coexisted for over five years.

The TTAB readily stated that, in the usual case, a likelihood of confusion would have existed. There was “no question” that the marks were similar, and that the goods were related, travelled in the same trade channels, and were bought by the same classes of purchasers.

Nonetheless, the TTAB relied on the 13th du Pont likelihood of confusion factor, which requires an analysis of “any other established fact probative of the effect of use”, and found no likelihood of confusion. SPI’s earlier ANYWEARS registration was more than five years old. Therefore, it could not be attacked on grounds of priority or likelihood of confusion. The TTAB found no meaningful difference between SPI's earlier mark (ANYWEARS) and SPI’s pending applied-for mark (ANYWEAR); the difference between the singular and the plural forms was not meaningful. These facts tipped the scale in favour of no likelihood of confusion, despite the admitted similarities in sight, sound and meaning between the applied-for ANYWEAR mark and the cited ANYWEAR BY JOSIE NATORI mark.

Importantly, the TTAB explained that it was not applying the so-called 'Morehouse defence', an equitable doctrine that applies where an applicant owns a prior registration for essentially the same mark identifying essentially the same goods (or services) that are the subject marks and goods of the subject application (see Morehouse Manufacturing Corp v J Strickland and Company (160 USPQ 2d 715 (CCPA 1969))). According to such a defence, the opponent (or petitioner) cannot be “further injured” by registration of essentially the same mark because there already exists an earlier, 'injurious' registration. With regard to SPI's application, the TTAB specifically stated that the 'Morehouse defence' does not apply in an ex parte context.

SPI was granted registration of its ANYWEAR mark, even though it was very similar to the cited mark, because SPI already had a previous registration for the highly similar ANYWEARS mark. The TTAB effectively rewarded SPI for its prior use of the US federal registration system. This should send a clear message to potential applicants that use of the system can inure to their benefit. 

Steve Schaetzel, McKeon Meunier Carlin & Curfman LLC, Atlanta

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