Jose Felgueroso
Abogado | Attorney
The Registration of a Mark is Refused Because of a Likelihood of Confusion with Marks Related to Pelé
info@josefelgueroso.com
2019-02-21
The Trademark Trial and Appeal Board of the United States Patent and Trademark Office (the "TTAB") has refused the registration of the mark "Pele Say" because consumers may confuse the source of products bearing that mark with the source of products bearing the mark "Pelé."
Background
The applicant applied to register the mark "Pele Say" for "wearable garments and clothing, namely shirts." Pele IP Ownership, LLC (the "opposer") opposed the registration based on common law marks and registered marks for "Pelé"; the opposer's registered marks were obtained with the consent of the renowned footballer Edson Arantes do Nascimento, known worldwide as "Pelé."
To prevail, the opposer had to prove (1) that it had used distinctive marks in commerce before the applicant and (2) that the applied-for mark would create a likelihood of confusion about the source of the products. The TTAB focused its analysis on the opposer's common law marks, because if the opposer could prove priority of use and likelihood of confusion regarding those marks, it would be unnecessary to consider the registered marks.
Priority of Use of Distinctive Marks
A common law mark is an unregistered mark that a merchant has used in connection with the sale of goods or the provision of services; the protection provided by a common law mark is limited to the territory where the mark has been used. In addition, a common law mark must be distinctive. In general, the less information a mark provides about the product or service, the more distinctive it is and the more protection it receives; thus, at one extreme would be marks that describe the product or service (for example, "Milk" for dairy products), and at the other are marks that provide no information about the product or service (for example, "Kodak" for photographic equipment). Finally, the opposer had to prove that it had used its mark before the applicant had used his.
Based on the evidence submitted by the opposer, the TTAB concluded that it had proved its common-law rights over the Pelé mark. First, the parties treated the Pelé mark as inherently distinctive, and the applicant failed to submit any evidence that that mark is not distinctive; likewise, the TTAB treated the mark as inherently distinctive. Second, the opposer started using its common law mark in 2011, and the applicant applied to register its mark in 2014, before it had actually used it, so the opposer had priority of use over the mark.
Likelihood of Confusion
If two parties use similar marks for similar products or services, consumers are likely to mistakenly conclude that the products or services originate from the same source.
Courts have developed criteria to determine the likelihood of confusion among consumers. Although the criteria are slightly different in the areas covered by different courts of appeals, they usually involve similar factors. In this case, the TTAB focused on the similarity of the marks, the similarity of the goods, the trade channels, and the strength of the opposer's mark.
Similarity of the Marks
The similarity between two marks regarding their appearance, sound, connotation, or impression supports a finding of likelihood of confusion.
The TTAB took into account the fact that "Pele Say" encompasses the entire Pelé mark. In addition, the appearance of the two marks is similar, except for the term "Say" in the applicant's mark. Furthermore, the word "Pele" is the first term in the mark "Pele Say," and courts have held that the first word of a mark is more prominent. The TTAB, however, also considered another factor that distinguishes the two marks: the opposer's mark has an acute accent over the second "e", whereas the applicant's mark lacks it.
Two factors with an uncertain effect on the similarity analysis were the pronunciation and the meaning of the marks. It was not clear from the record how the word "Pele" in "Pele Say" is pronounced. Regarding meaning, the opposer's mark "Pelé" refers to the footballer, whereas the applicant argued that the word "Pele" in his mark refers to the Hawaiian volcano goddess; it was unclear from the record whether consumers would associate the applicant's mark with the goddess.
Taking into account the factors above, the TTAB concluded that on balance the two marks are similar.
Similarity of the Goods
To support a finding of likelihood of confusion, the parties' goods need not be identical: it is sufficient that they are related in a manner that would lead consumers to mistakenly conclude that they originate from the same source.
The goods indicated in the application for the mark "Pele Say" were "[w]earable garments and clothing, namely, shirts." Thus, the application did not limit the types of shirts on which the applicant intended to use his applied-for mark. For its part, the opposer submitted evidence that one type of product on which it uses its mark are jerseys. The TTAB relied on a dictionary definition of "jersey" (“a close-fitting, knitted sweater or shirt”) to conclude that the applicant's goods identified in the application encompass the opposer's jerseys. In addition, the applicant has offered for sale jerseys with the mark "Pele Say."
Thus, the TTAB determined that the parties' goods are similar.
Trade Channels
The parties need not offer their goods through the same channels to generate confusion among consumers: it is sufficient that they are sold under circumstances that would lead consumers to confuse the source of the products.
The application at issue in this case did not list any restrictions regarding trade channels; as a result, the TTAB considered that the applicant could sell his goods through all channels of trade and to all classes of consumers. The opposer submitted evidence that its products were sold through online and offline retailers. In addition, the record also contained evidence that the opposer's goods and the applicant's goods were sold on eBay.
The TTAB concluded that the evidence showed at least a partial overlap of the channels of trade through which the parties sold their goods.
The Strength of the Opposer's Mark
The final factor that the TTAB considered concerns the strength of the opposer's mark, derived from its inherent strength and its commercial recognition, using factors such as sales, advertising, length of use, critical assessments, and general reputation.
The parties treated the opposer's mark as inherently distinctive, and the TTAB did the same. In addition, the record did not reveal that marks similar to "Pelé" are in widespread use for similar products. On the other hand, the opposer submitted evidence related to Pelé's fame, but not related to the fame of the Pelé mark.
The TTAB determined that the opposer's mark was inherently distinctive and had a certain degree of commercial strength.
Conclusion
Taking into account that the opposer had used its common law mark before the applicant, and that the applicant's mark could create confusion among consumers about the source of the products, the TTAB refused the registration of the applicant's mark. Since the TTAB reached this result by analyzing the opposer's common law mark, it did not need to address its registered marks.