TTAB Refuses to Take Judicial Notice of WIkipedia Entry, Affirms Section 2(d) Refusal of FREEBIRD BY STEVEN for Clothing
The Board affirmed a Section 2(d) refusal to register FREEBIRD BY STEVEN for "shoes," finding the mark likely to cause confusion with the registered mark FREE BIRD for various clothing items. Applicant attached to its appeal brief a definition of "Free Bird" from a Wikipedia entry, and asked the Board to take judicial notice of same. The Board declined. In re Steven Madden, Ltd., Serial No. 85313681 (November 29, 2013) [not precedential].
Since the Wikipedia evidence was attached to applicant's brief, it was untimely. However, the Board may take judicial notice of dictionary definitions, encyclopedia entries, standard reference works, and commonly known facts. But Wikipedia entries are not so reliable. "Because Wikipedia is a source whose accuracy may be questioned, it is not a source from which the Board may take judicial notice." Wikipedia evidence must be offered at a time when the other party will have an opportunity to challenge the evidence. See In re IP Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007). [TTABlogged here].
Turning to the 2(d) refusal, the Board found "Freebird" to be the dominant element in Madden's mark. It is the first word in the mark and furthermore would be seen as "the product mark identifying the source of a specific item," while "by Steven" would be seen as a house mark for a range of products. "Consumers could well think that 'by Steven' identifies the source of the FREE BIRD products or that registrant has licensed applicant to manufacture shoes under the FREEBIRD brand."
Applicant Madden argued that "by Steven" serves to distinguish the marks because Steven Madden is "almost synonymous with shoes." The evidence demonstrated that Steven Madden is a renowned shoe designer and entrepreneur but, the Board noted, there was no evidence that consumers think of him when they see a mark that includes the term "by Steven" in connection with clothing or shoes. In any case, the fame of the mark is only one of the duPont factors. "A junior party's fame cannot excuse likelihood of confusion created by its use of a mark similar to one already in use."
Next, Madden feebly argued that the term "free bird" is highly suggestive for women's apparel, based on the term's reference to the Lynyrd Skynyrd song, "Free Bird," a song that "refers to the relationships between men and women." Madden pointed out that "bird" is an English slang term for "girl."
The Board was not impressed. First, it perceptively noted that "British slang is not American slang." [Hear, hear! - ed.]. Moreover, the Board failed to see that a reference to relationships between men and women "has anything to do with shoes and clothing."
And so the Board found the marks at issue to be similar in appearance, sound, meaning, and commercial impression.
Not surprisingly, third-party registration and website evidence, submitted by Examining Attorney Zachary Bello, as well as applicant's own evidence, demonstrated that applicant's shoes and registrant's shirts, pants, etc., are related and are sold through the same channels of trade.
Madden disagreed, maintained that registrant's goods are inexpensive ($10-12 wholesale) and may be purchased only online at registrant's website, by clothing distributors, whereas Madden's shoes are relatively expensive (well more than $100 retail).
The Board once again pointed out that its Section 2(d) determination must be made on the basis of the goods as identified in the opposed application and the cited registration. Because there are no limitations as to trade channels or customers in the application or registration, the Board must presume that the goods move in all normal channels of trade to the usual classes of consumers. Nor are there any restrictions on the prices of the goods.
Balancing the relevant duPont factors, the Board found confusion likely and it affirmed the refusal.
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TTABlog note: "I'm as free as a bird now, And this bird you can not change."
Text Copyright John L. Welch 2013.