Dominant Feature Of A Trademark – Racegirl vs Redneck Racegirl

On December 18, 2014, the Trademark Trial and Appeal Board (TTAB) issued a precedential opinion discussing the weight given to the dominant feature of a trademark in a likelihood of confusion analysis.

In the case of In re Covalinski, Lisa Covalinski sought to register the trademark “REDNECK RACEGIRL” in trademark classification 25 for athletic apparel, including shirts, pants, jackets, footwear, hats, caps, and athletic uniforms. The United States Patent and Trademark Office’s (USPTO) Trademark Examining Attorney refused the registration under Section 2(d) of the Trademark Act, arguing that Covalinski’s trademark would likely cause confusion with an already registered trademark “RACEGIRL” in trademark class 25 for various clothing items such as caps, jerseys, shirts, and jackets. Covalinski appealed this decision to the TTAB.

The primary issue in this case was whether the dominant feature of Covalinski’s mark “REDNECK RACEGIRL” would likely cause confusion with the pre-existing “RACEGIRL” mark. The Examining Attorney contended that the dominant feature in both marks was the word “RACEGIRL,” and since the goods were identical or closely related, there was a likelihood of confusion among consumers.

The TTAB’s analysis began with a comparison of the goods. Both Covalinski’s and the registrant’s trademarks were used on clothing items, and many of these items were identical. Because the goods were in part legally identical, it was presumed that the trade channels and classes of purchasers for these goods would also be the same. This presumption generally favors a finding of likelihood of confusion, as consumers would likely encounter both marks in similar retail settings, such as clothing stores or online shopping platforms.

Despite the similarities in the goods and trade channels, the TTAB placed significant emphasis on the similarity of the trademarks themselves and the dominant features within those trademarks. The proper test for likelihood of confusion does not rely on a side-by-side comparison of the marks but rather on whether the marks are sufficiently similar in their overall commercial impression. This involves considering the marks in their entireties, with a focus on the more distinctive elements.

In this case, the TTAB determined that the design elements in Covalinski’s mark played a crucial role in differentiating it from the “RACEGIRL” mark. Covalinski’s mark included the additional word “REDNECK” and a distinctive design element consisting of two large capital “R” letters filled with a checkerboard pattern resembling a racing flag. These design elements were prominent and visually dominant, creating a significant difference in the overall commercial impression of the mark compared to the plain “RACEGIRL” mark.

The Examining Attorney argued that the words “REDNECK RACEGIRL” were the dominant feature of Covalinski’s mark and that the similarity in wording to the “RACEGIRL” mark was sufficient to cause confusion. However, the TTAB found that in this particular case, the design elements were so prominent that they overshadowed the shared wording. The large “RR” letters with the checkerboard pattern, elongated horizontal legs, and heart shapes created a distinct and memorable visual impression that drew attention away from the word “RACEGIRL.”

The TTAB referenced previous decisions to support its conclusion that design elements can be the dominant feature of a mark, even when words are present. For example, in the Viterra case, the Federal Circuit acknowledged that while words in a composite word and design mark are often considered dominant, this is not always the case. In some instances, the design elements can create a dominant visual impression that differentiates the marks.

After weighing all the factors, the TTAB concluded that the differences between the trademarks, particularly the distinctive design elements in Covalinski’s trademark, were significant enough to avoid a likelihood of confusion. The overall commercial impression of Covalinski’s mark was dominated by its design features, particularly the large double-letter “RR” configuration, and this outweighed the similarities in the wording.

The TTAB reversed the refusal to register the trademark “REDNECK RACEGIRL”, allowing Covalinski to proceed with the registration. This decision highlights several important aspects of trademark law, particularly the concept of the dominant feature in a mark.

The key lesson from this case is the importance of considering the entire mark, including both word and design elements, when assessing the likelihood of confusion. Design features can play a critical role in differentiating marks that share similar wording, especially in visually oriented markets like clothing. The case also underscores that even when goods and trade channels are identical or closely related, the overall commercial impression of the marks can be a decisive factor in determining the likelihood of confusion.

Additionally, this case illustrates that a single factor, such as the dissimilarity of the marks’ design elements, can be dispositive in a likelihood of confusion analysis. The TTAB’s decision emphasizes the need for a comprehensive and balanced evaluation of all relevant factors, rather than relying solely on the similarity of the wording.

In summary, the TTAB’s decision in the case of In re Covalinski reinforces the nuanced approach required in trademark disputes, where the distinctiveness of design elements and the overall commercial impression of the marks can outweigh similarities in wording and relatedness of goods. This case serves as a valuable reference for trademark owners and practitioners in understanding the complexities of trademark registration and opposition proceedings.

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