In a recent decision, the Trademark Trial and Appeal Board (TTAB) found likelihood of confusion between PRL USA Holdings, Inc.’s design mark depicting a polo player on a horse and a design mark depicting a polo player falling off of a horse, owned by Thread Pit, Inc. The Board declined to address the issue of dilution. PRL USA Holdings, Inc. v. Thread Pit, Inc., Cancellation No. 92047436 (T.T.A.B. May 14, 2012) (non-precedential).
PRL sought to cancel Thread Pit’s mark, registered for t-shirts and collared polo shirts, based on likelihood of confusion with and dilution of PRL’s mark, registered for various clothing and accessory items. Thread Pit asserted an affirmative defense that its use of the mark was a parody of certain marks owned by PRL.
After addressing an evidentiary issue and determining that PRL had both standing to assert its claims and priority over Thread Pit’s mark, the TTAB went on to consider likelihood of confusion. Noting the dominant role fame plays in the process of balancing the likelihood-of-confusion factors, the TTAB reviewed the evidence set forth by PRL to establish the fame of its mark and determined that PRL’s mark was famous in the field of clothing. Thread Pit conceded that PRL’s mark was famous, but argued that the fame of the mark served to lessen the likelihood of confusion. However, the Board found that Thread Pit’s argument was contrary to legal precedent of the TTAB and the Court of Appeals for the Federal Circuit, which dictates that famous marks are afforded a higher degree of protection.
Regarding the similarities between the goods, the TTAB determined that the goods were in part identical (a fact admitted by Thread Pit in its answer). The Board rejected Thread Pit’s argument that this factor should weigh in its favor because PRL’s various registrations covered a wide variety of clothing, such that the scope of goods on which the parties’ marks appeared was “vastly different.” It also rejected Thread Pit’s arguments regarding differences in actual sale conditions (that PRL’s goods were expensive, were limited to the high end of the market and were purchased by sophisticated consumers) and determined that the channels of trade and classes of purchasers of the parties’ respective goods were presumed to be the same, because there were no restrictions in the identifications of goods in the parties’ registrations as to trade channels or purchasers. The TTAB went on to find that the marks were very similar in appearance and overall commercial impression, and that the alleged absence of actual confusion was not entitled to much weight in the likelihood-of-confusion analysis.
PRL argued that Thread Pit was aware of PRL’s mark before adopting its own, and in fact had designed its mark with the intention that it be similar to PRL’s mark. Thread Pit argued that its intent was not to copy PRL’s mark but rather to “parody the elite in society as embodied by the sport of polo.” It asserted that “the rider falling off the horse is the parody of [the] elite, luxury lifestyle” associated with polo. The TTAB reasoned, however, that parody is not a defense if the marks are otherwise confusingly similar. In addition, citing its prior decisions in Nike, Inc. v. Maher, 100 U.S.P.Q.2d 1018, 1023 (T.T.A.B. 2011), and Elvis Presley Enterprises Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998), the Board reasoned that a parody of a lifestyle is not a parody of a trademark. Thus, Thread Pit’s claim that its mark was parodying an elite, luxury lifestyle (rather than parodying PRL’s mark) was not a defense to PRL’s likelihood-of-confusion claim.
The TTAB concluded that, based on the similarities of the marks, the fame of PRL’s mark, the identical goods and the overlap in channels of trade and purchasers, confusion between the marks was likely. In view of its decision on likelihood of confusion, the TTAB refrained from addressing PRL’s dilution claim.
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© 2012 International Trademark Association