In a rare reversal, the Trademark Trial and Appeal Board reversed an examiner’s finding that the stylized REDNECK RACEGIRL mark for various athletic apparel was confusingly similar to the standard word mark RACEGIRL for hats, belts, shirts and other apparel in Class 25.
In its decision, the TTAB looked at the similarity of the marks, the similarity of the goods and the channels of trade. It started by considering whether the Applicant’s goods were similar to the goods in the RACEGIRL registration. The board held that at least some of the goods in the applicant’s application overlapped with the RACEGIRL goods because some of the goods were legally identical, like “sweat pants” and “pants.” Similarly, the TTAB found that both marks’ goods were sold in the same channels of trade because neither the application nor the cited registration limited the channels of trade to specific consumers.
The TTAB then analyzed the similarity in sight and commercial impression and found that the Applicant’s mark was not confusingly similar to the cited mark. The Board found that the most distinctive elements of the Applicant’s mark was not the literal words “REDNECK RACEGIRL” but were instead the two large “R”s in the Applicant’s mark. The Board noted that the “R”s were significantly larger than the rest of the text and were filled with checkerboard racing flags. It also noted that the trailing words “edneck” and “acegirl” were drawn in an elongated way and were so small that they were “difficult to notice.” Together, the large “R”s and small “edneck” and “acegirl” elements made the mark visually distinct from the cited RACEGIRL mark. The TTAB focused on the visual aspects of the marks because consumers would be encountering these marks in the retail settings on hang tags and labels.
The Board acknowledged that the goods were identical and contained some of the same words, but it ultimately held that the two marks were simply too visually distinct from one another for a likelihood of confusion to occur. The Board distinguished this proceeding from others where the TTAB found that the literal portion of a composite mark made the greatest impact on consumers, such as In Re Viterra, where the Board found the dominant portion of the mark was XSEED and not the stylized “X” alone. In the present proceeding, Board found that, unlike Viterra, the “overall commercial impression of Applicant’s mark is dominated by its design features.”
This decision is a rare win for a trademark applicant. To put this in context, since 1996, the TTAB has only reversed about 20% of appeals based on examiner refusals. This decision also provides a good example of how a stylized mark can create a distinct commercial impression, even when a standard word mark exists for a literal portion of a stylized mark. However, this also means that the Applicant will be required to use (in the author’s opinion) a difficult-to-read trademark in its exact form in order to claim protection from this federal registration. It is also possible that, once this application is published for opposition, the owner of the RACEGIRL mark could bring an opposition proceeding and bring different arguments from those of the trademark examining attorney.
ONE. If any of the goods and services overlap between an application and a registered mark, then the application’s goods and services will be deemed “similar” to the registered mark’s goods and services.
TWO. While the literal portion of some stylized marks might be the most dominant portion of the mark, noticeably distinguishable design elements (like the large “R”s in the present proceeding), may have the biggest impact on consumers in a likelihood of confusion analysis.
THREE. The Trademark Trial & Appeal Board typically sides with the trademark examining attorney in ex parte appeals of examiner refusals. Since 1996, only about 20% of appeals from refusals have been reversed.