Appealing Swimwear

The Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office reversed a refusal to register SOUTH BEACH SWIMWEAR for “swimwear” (Serial No. 85/892,299) based on likelihood of confusion with the registered trademark SOUTH BEACH WINE & FOOD FESTIVAL (Reg. No. 3,864,216) for “T-shirts, polo shirts, tank tops, visors, aprons.” In issuing the likelihood of confusion refusal, the examiner argued that “SOUTH BEACH” is the dominant portion of both marks since it appears first. Further, because SWIMWEAR is generic of the goods, the examiner afforded the term little weight in his analysis. The Board disagreed, sensibly pointing out that “SOUTH BEACH” is inherently weak because it identifies a neighborhood of Miami Beach where any number of businesses might adopt the same wording. Further, in the cited mark, the Board found that “WINE & FOOD FESTIVAL” was at least as important as “SOUTH BEACH. ” Overall, the Board found that the marks have significantly different commercial impressions and that consumers would not be confused. (In other words, most consumers will not try to order fries at a swimwear shop, or buy a bikini at a food festival).

It’s important for applicants to remember that examiners often issue refusals that miss the mark (pun intended). A thoughtful responsive argument can often win approval of the mark, and if that fails the TTAB appeal process allows another chance to have the mark examined by a panel of three experts.