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See You Later, “Southern Smocked” Alligator

Posted by Thomas P. Howard | Sep 06, 2021 | 0 Comments

By James Juo.

One of the benefits of having strong trademark rights in your logo is that “[a] strong mark … casts a long shadow which competitors must avoid.” Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 353 (Fed. Cir. 1992). Trademarks that are similar may be likely to cause consumers familiar with a strong trademark to assume that the other junior user is somehow affiliated with that strong trademark, perhaps as a licensee.

In Lacoste Alligator S.A. v. Southern Smocked Co., LLC, Opposition No. 91244445 (TTAB Aug. 25, 2021), the examining attorney at the U.S. Patent and Trademark Office (“USPTO”) had allowed and published an alligator logo by Southern Smocked Company for opposition; but Lacoste opposed registration of the applied-for mark.

Compare Lacoste
The Trademark Trial and Appeal Board (“TTAB”) held that the alligator logo of Lacoste was a “strong” mark for clothing, with U.S. sales exceeding $238 million per year and whose branded clothing has received significant media attention. The strength of a trademark may be measured indirectly by, among other things, the volume of sales and advertising expenditures of the goods traveling under the mark, length of use of the mark, market share, brand awareness, licensing activities, and variety of goods bearing the mark.

With respect to the legal test for likelihood of confusion, the average purchaser normally retains a general rather than a specific impression of trademarks, and the TTAB stated “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression' such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). Here, the the TTAB found that the differences in the marks were less distinctive than the similarities in the alligator designs, and thus entitled to less weight. “[W]hile there are differences between the marks, they are not sufficient to overcome the various similarities, especially when the parties' marks are used on legally identical goods.” The TTAB concluded that many consumers familiar with Lacoste's strong and “iconic” mark would be likely to assume that Southern Smocked was somehow affiliated with Lacoste, perhaps as its subsidiary or licensee; and refused registration of the applied-for mark.

The Board also cited to “analogous cases in which design marks were found [confusingly] similar, notwithstanding their obvious differences,” such as Kangol Ltd. v. Kangaroos U.S.A., Inc., 974 F.2d 161 (Fed. Cir. 1992); In re Calgon Corp., 435 F.2d 596 (CCPA 1971); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002); Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280 (TTAB 1998);  In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635 (TTAB 1988); In re United Service Distributors, Inc., 229 USPQ 237, 239 (TTAB 1986); Puma-Sportschuhfabriken Rudolf Dassler KG v. Garan, Inc., 224 USPQ 1064 (TTAB 1984); Odom Sausage Co., Inc. v. Doskocil Sausage, Inc., 169 USPQ 379 (TTAB 1971); In re Triple R Mfg. Corp., 168 USPQ 447 (TTAB 1970).

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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