United States: CAFC asserts that TTAB: ETHIK CLOTHING CO. & Design can be confused with ETHIKA For Clothing
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In an unprecedented move, the CAFC upheld the TTAB’s decision [pdf here] grant a request for cancellation of a trademark registration ETHIK CLOTHING CO. & design for various clothes. The Commission considered that there was probable confusion with the mark ETHIKA for overlapping garments. The court of appeal concluded that the board had correctly analyzed the marks in question and rejected the argument newly presented by the appellant concerning the weakness of the mark ETHIKA. Alexander Hage-Boutros v. Ethika, Inc.Appeal No. 2021-1615 (Fed. Cir. February 4, 2022)
Appellant Hage-Boutros, appearing pro se, argued that the Board had improperly dissected its mark instead of considering the marks in issue in their entirety. This is not the case, the court said. The Commission rightly gave little weight to the descriptive term CLOTHING CO. and also correctly dismissed the impact of the design portion of the mark “because apparel consumers are likely to verbally refer to goods by the term ETHIK rather than by design or by distinctive non-words.”
Hage-Boutros raised a new argument on appeal: that the differences between the marks eliminate any risk of confusion because the plaintiff’s mark is weak given three third-party registrations and a pending application (for marks containing the term ETHIC or ETHICS). Therefore, he argued, the applicant’s mark should be granted a narrower scope of protection. The court noted that it generally does not consider issues “not conveyed below” or entertain arguments not made in the lower court. However, a pro party has some leeway: “an appellate court may justly be less stringent by requiring the issue to have been raised explicitly below”. And so, the court chose to consider this argument.
However, Hage-Boutros’ new argument fails in substance. It provided no evidence regarding the extent or impact of third-party use. Quote Palm Bay Importsthe court observed: “The probative value of third-party marks depends entirely on their use” and “where the record contains no evidence of third-party uses[.] the probative value of this evidence is therefore minimal.”
Finally, the court rejected the applicant’s claim that the appeal was frivolous and therefore warranted sanctions. The TTAB’s judgment was not “so clearly correct and the legal authority contrary to the appellant’s position so clear that there is really no appealable issue”. “Mr. Hage-Boutros may have made an unconvincing argument, but his appeal was clearly not frivolous under the auspices of Rule 38.”
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