In Metal Jeans, Inc. v. Destroyer Promotional Products, LLC, Opposition No. 91252176 (TTAB Nov. 1, 2023), Destroyer Promotional's application to register the METAL HEADS mark for various “Headwear” was opposed by Metal Jeans based on its prior METAL mark for “Clothing, namely, ski jackets and snowboard jackets; clothing, namely, jeans and shirts” in the same class.

The TTAB noted that two marks can be “similar” in some respects but quite different in others.

METAL v. METAL HEADS

Also, while the first term in a mark generally is considered to be the feature which will be called for, and so remembered, by consumers, this is not invariably the case. See Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (“the Board did not err in finding that ‘STONE LION CAPITAL' is ‘similar in sight, sound, meaning, and overall commercial impression'to ‘LION CAPITAL' and ‘LION.'”); e In re Chatam Int'l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR'S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical.”).

Here the evidence shows that Applicant's mark METAL HEADS is well-recognized unitary term with a very different meaning from the singular term METAL. Three different dictionaries define the noun “metalhead” as “a fan or performer of heavy metal.” 14 The fact that this term appears in multiple dictionary entries reflects that it is firmly entrenched in the U.S. English language lexicon. The combination of the individual words “metal” and “heads” in Applicant's mark creates a unique commercial impression that is very different from the meanings or connotations of each individual word. “Metalhead” (and its plural noun form) is so well recognized by consumers that the two words “metal” and “head” cannot be regarded as separable. See In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983). As a result, METAL HEADS is a unitary mark and must be considered as such.

Because the meaning of “metal head” signifying a “fan or performer of heavy metal” stands in contrast to the dictionary definition of “metal”—it engenders a different connotation and commercial impression.

When compared overall, despite the similarity in sound and appearance, the marks are more dissimilar than similar in connotation and commercial impression. In other words, consumers will readily distinguish Applicant's mark METAL from Opposer's unitary mark METAL HEADS.

Furthermore, the evidence of record included approximately 72 live third-party registered composite marks incorporating the word METAL for clothing (about 130 third-party registrations had been submitted, but the remainder were either cancelled or abandoned).

Evidence of third-party registrations for the same or similar goods can bear on a mark's conceptual strength. See Omaha Steaks Int'l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1695 (Fed. Cir. 2018) (citing Juice Generation, 115 USPQ2d at 1675). Properly made of record, third-party registrations may be relevant, in the manner of dictionary definitions, “to prove that some segment of the [marks] has a normally understood and well recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” Juice Generation, 115 USPQ2d at 1675 (internal citation quotation marks omitted); see also Jack Wolfskin, 116 USPQ2d at 1136. Even if “there is no evidence of actual use” of “third-party registrations,” such registrations “may be given some weight to show the meaning of a mark in the same way that dictionaries are used.” Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976).

The TTAB found that “such a large number of third-party registered marks incorporating METAL in connection with clothing demonstrates that the term has been weakened by third-party registrations to the extent that consumers are capable of differentiating similar marks based on slight distinctions.” Thus, marks containing METAL for clothing may be distinguished by additional elements in the marks. See In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012) (seven registrations incorporating “Grand Hotel” show that the Patent Trademark Office views the marks “as being sufficiently different from the cited registrant's mark, and from each other, such as not to cause confusion” and “we presume that the owner of the cited registration did not have a problem with the registration of these third-party marks, as they all issued after the registration of the cited registrant's registration without challenge by the registrant”); Plus Prods. v. Nat. Organics, Inc., 204 USPQ 773, 779 (TTAB 1979) (numerous PLUS marks on the trademark register for vitamins reflect the Office's belief, trademark owners' belief, and plaintiff's belief that PLUS marks can be registered side by side for vitamins without confusion provided there are minimal differences between the marks); Jerrold Elecs. Corp. v. Magnavox Co., 199 USPQ 751, 758 (TTAB 1978) (third-party registrations “reflect a belief, at least by the registrants, who would be most concerned about avoiding confusion and mistake, that various ‘STAR' marks can coexist provided that there is a difference.”).

Thus, under the sixth DuPont factor, Opposer's METAL mark had a more limited scope of protection due to the large number of registered composite marks for clothing incorporating METAL.

The TTAB concluded that “consumers will be able to distinguish the parties' marks by virtue of the presence of HEADS in Applicant's mark, METAL HEADS, and attribute a different connotation and meaning to Applicant's mark.”

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