Kenneth Cole Gives Pen Maker the BOOT over LE TIGRE trademark

The Trademark Trial and Appeal Board has sustained Opposer, shoe maven Kenneth Cole’s contention that LE TIGRE for clothing is confusingly similar to Applicant’s use of LE TIGRE for pens.

Cole failed to establish that its LE TIGRE mark was famous. The Board pointed out that Cole had not provided sales data or advertising information sufficient to show that the mark was famous. Nevertheless, Cole did provide the Board with evidence of its vast licensing program and unsolicited newspaper articles relating to its LE TIGRE brand, as well as an article entitled “Licensing Seen as a Key to Strong Brand Presence.”

The rather rambling decision serves as a reminder that procedure is as important as argument at the TTAB. Not until page 12 of the 23-page report does the Board begin to address the merits of the case, spending the prior pages addressing issues related to the admissibility of evidence and objections raised by both parties.

On the basis of its 23 year use of the mark LE TIGRE for clothing, coupled with its licensing program and the fact that numerous leather companies also have lines of writing instruments, the Board determined the weight of the evidence suggested consumers would likely believe pens and clothing bearing the LE TIGRE mark emanated from the same source.

The case underscores the convergence of industry that companies and their lawyers are facing when trying to clear trademarks for use. Given the diversity that some companies maintain in their product offerings, the ability to predict whether a mark is confusingly similar is becoming more difficult.

Practice Note The lengthy discussion in this case related to procedure is worth noting, if only as a reminder to check (and re-check) what is admissible under a notice of reliance and what requires a deposition; and further, how to properly time objections

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