Wednesday, September 2, 2009


Inca Textiles sought a federal trademark registration for "INCA MAMA" for use with maternity apparel. Problem is, INCA GIRL (below) was already registered as a mark for use with clothing.

The Examining Attorney refused registration arguing that INCA MAMA was likely to be confused with INCA GIRL. The TTAB affirmed, and Inca Textiles appealed to the Federal Circuit.

First, the Court explained the well-settled law:
In determining whether there is a likelihood of confusion between two marks, the marks are analyzed with the guidance of the factors identified in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). Not all of the DuPont factors may be relevant to any given case, and only those factors implicated by the evidence and the particular mark need be considered. In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406 (Fed. Cir. 1997). Doubts as to the likelihood of confusion are resolved in favor of the prior user of a mark. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002) (resolving doubts about likelihood of confusion against the newcomer).
The Court then discussed some DuPont factors:
  • Similarity in sight, sound, connotation, and commercial impression
    • even though INCA GIRL was a composite mark, the INCA GIRL words were still dominant portion, and in some instances the only part of the mark shown

  • similarity/dissimilarity and nature of the goods/services
    • INCA MAMA = maternity clothes; INCA GIRL = women's clothing; thus, it's close enough

  • similarity/dissimilarity of respective trade channels
    • INCA MAMA's focus on brick & mortar sales, as opposed to INCA GIRL's web sales, was not persuasive

Decision affirmed.

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