13th DuPont Factor (Prior Registration) Saves AXION From Section 2(d) Refusal Over AXEON LABS for Clothing

The Board reversed a Section 2(d) refusal to register the mark AXION (in standard character form) for "Belts for clothing; Footwear; Headwear; Hoodies; Shirts; Shoes; Shorts; Socks; Sweatshirts; T-shirts; Jogging pants," finding confusion not likely with the registered mark AXEON LABS for overlapping clothing items. Although the Board presumed that the identical goods travel in the same trade channels to the same classes of consumers, and found the marks to be confusingly similar, the 13th DuPont factor was dispositive. In re 1872 LLC, Serial No. 88897035 (September 23, 2021) [not precedential] (Opinion by Judge Thomas Shaw).

The thirteenth DuPont factor allows the Board to consider "any additional probative facts to accommodate the need for flexibility in assessing each unique set of facts." Applicant claimed ownership of the word-plus-design mark shown immediately below, for "clothing, namely, shirts, t-shirts, shorts, sweatshirts, pullovers, pants, jackets, coats, belts, socks, headwear and footwear."

Applicant's prior registration issued in November 2018, before the filing of the underlying application that led to the cited registration. "In other words, applicant owns a registration for a mark incorporating the same applied-for term, AXION, for in-part identical goods."

Cases involving prior registrations under the thirteenth factor customarily consider whether substantially similar marks should be allowed to coexist on the Register because of an applicant’s prior registration of a similar mark for the involved goods or services. See, e.g., In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790 (TTAB 2017) (finding composite mark including the words USA WARRIORS ICE HOCKEY and NONE TOUGHER separated by a logo likely to cause confusion with composite mark including the words USA HOCKEY despite applicant’s prior registration of composite mark including the words USA WARRIORS ICE HOCKEY and NONE TOUGHER separated by a logo); In re Strategic Partners Inc., 102 USPQ2d 1397 (TTAB 2012) (finding that applicant’s ownership of a prior registration for a substantially similar mark for the same goods which had coexisted with the cited registration for over five years was sufficient to “tip the scale in favor of applicant and a finding of no likelihood of confusion.”).

Factors to be considered in this situation include (1) whether the prior registered mark is the same as or otherwise not meaningfully different from the proposed mark; (2) whether the identifications of goods is identical or identical in relevant part; and (3) the length of time the prior registration has coexisted with the cited registration. 

The Board found that AXION "does not differ meaningfully from the literal portion of the mark in Applicant’s prior registration, for partially identical articles of clothing, because consumers are generally more inclined to focus on and remember the word portion of a composite mark."

The Board observed that it was not bound by the prior determination of the examining attorney who allowed the AXEON LABS mark to register over applicant's prior registration. However, "[t]he fact that the USPTO permitted the cited registration to issue over Applicant’s prior registration for a substantially similar mark and in-part identical goods, buttresses our ultimate conclusion that there is no likelihood of confusion between Applicant’s AXION mark and the AXION LABS (sic) mark."

And so, the Board reversed the refusal to register.

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Text Copyright John L. Welch 2021.

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