Friday, July 09, 2010

Trademark KID'S OUTDOORS prevails at CAFC

Outdoor Kids tried to take on Kid's Outdoors in the trademark arena, and lost at the CAFC:

Appellant Outdoor Kids, Inc. (“Outdoor Kids”), ap-
peals the decision of the Trademark Trial and Appeal
Board (“the Board”) dismissing Outdoor Kids’ petition for
cancellation of appellee Parris Manufacturing Co.’s
(“Parris”) U.S. Trademark Registration No. 3,055,384 (the
“’384 mark”) for KID’S OUTDOORS words and design
(the “KID’S OUTDOORS mark”) for “clothing, namely,
children’s costumes, vests, shirts and caps” in Interna-
tional Class 25 and its U.S. Trademark Registration No.
3,055,385 (the “’385 mark”) for the identical KID’S
OUTDOORS mark for “toys, namely, toy guns, and toy
hunting and fishing gear” in International Class 28.
Outdoor Kids, Inc. v. Parris Mfg. Co., Inc., Cancellations
Nos. 92045687 and 92046943 (T.T.A.B. 2009). We affirm.

Things started out badly:

Indeed, continued the Board, the Outdoor Kids mark
is not only not famous, it is weak. The Board pointed to
Outdoor Kids’ amended application, in which, by submit-
ting a disclaimer of “KIDS” and seeking and obtaining
registration under 15 U.S.C § 1052(f), it admitted that the
OUTDOOR KIDS mark is not an inherently distinctive
mark and that the words are merely descriptive of its
goods, with the word “KIDS” being generic. See, e.g.,
Yamaha Intern. Corp. v. Hoshino Gakki Co., Ltd., 840
F.2d 1572, 1577 (Fed. Cir. 1988) (“[I]n cases where regis-
tration was initially sought on the basis of distinctiveness,
subsequent reliance by the applicant on Section 2(f)
assumes that the mark has been shown or conceded to be
merely descriptive.”).

The issue on appeal:

Outdoor Kids does not dispute the factual
findings of the Board. Rather, it maintains that the
Board committed legal error in its weighing of the rele-
vant DuPont factors when it determined that there was
no likelihood of confusion between its mark and Parris’
KID’S OUTDOORS mark. See Kenner Parker Toys Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 355-56 (Fed. Cir.
1992) (Board erred as a matter of law in improperly
weighing DuPont factors). Specifically, Outdoor Kids
argues that the Board erred in giving little comparative
weight to the similarity of the word marks, the similarity
of the relevant goods, and the similarity of the trade
channels in which the goods traveled.

Of the DuPont factors:

Analysis of the DuPont factors constitutes a balancing
test, with the weight of the various factors depending
upon the circumstances of the individual case. DuPont,
177 U.S.P.Q. at 567; see also Kellogg Co. v. Pack’em
Enters., Inc., 951 F.2d 330, 333 (Fed. Cir. 1991). Indeed,
even a single DuPont factor may be dispositive in a given
case. Id.


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