David Lilenfeld Blog The intellectual property blog of David Lilenfeld

28Jan/160

Trademark Office Rules ORION for Fishing Rods is Unregisterable

By David Lilenfeld on January 28, 2016

L.L. Bean sought to register the trademark ORION for fishing rods but was refused by the Trademark Office because the trademark was confusingly similar to the identical trademark already registered for golf clubs.

The Trademark Office relied upon Section 2(d) of the Tradetrademark Act, 15 U.S.C. § 1052 (d) likelihood of confusion when refusing to register ORION for fishing rods.

L.L. Bean argued that the goods in question, namely the fishing rods and the golf clubs, are not related, that the trade channels cannot overlap, and that the consumers for these goods are sophisticated and discriminating. Applicant also alleged that the use of its house trademark in connection with the involved trademark on applicant’s goods reduces the likelihood of confusion between the registered trademark and the applicant’s trademark. Lastly, L.L. Bean argued that, should there be a finding of likelihood of confusion, L.L. Bean should be permitted to amend its application limiting the channels of trade of the goods to L.L. Bean outlets.

On the contrary, the Examining Attorney, Georgia Ann Carty Ellis, contended that ORION is a strong arbitrary trademark for sporting goods, that L.L. Bean presented an identical trademark, and that its use of its house trademark could not reduce the likelihood of confusion. The Examining Attorney relied upon 140 third-party registrations covering golf clubs and fishing rods to show that customers are often exposed to golf and fishing goods sold in the same market.

The Trademark Office’s decision under Section 2 (d) is based upon an analysis of the likelihood of confusion factors detailed in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The du Pont factors all favor the position taken by the Examining Attorney that the trademarks are identical. Thus, the TTAB found that even when the relationship between the goods is not as closely related there can still be a finding of common source.

There is no per se rule that all sporting tools are related. However, the Examining Attorney noted third-party registrations show that goods can come from the same source and be offered under the same trademark.

Regarding the du Pont factor that focused on the trade channels, L.L. Bean argued that it established its own channels of trade because L.L. Bean markets and sells all of its products through L.L. Bean stores, catalogs and websites. The TTAB recognized that even if the goods were not sold in the same store, they would be sold in the same type of stores.

Lastly, L.L. Bean offered to amend its identification of goods to limit the channels of trade. The TTAB agreed with the PTO that the amendment was untimely. Nevertheless, even if the amendment were allowed it would not avoid a likelihood of confusion. In conclusion, when consumers who are familiar with ORION golf clubs learn of ORION fishing rods, they are likely to believe there is a connection between the goods.

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