Written by Robb Roby and Samantha Markley

Wal-Mart Stores, Inc. asked the Trademark Trial and Appeal Board (TTAB) to reconsider its rejection of an application for the mark GEORGE in connection with watches, clocks, jewelry, and imitation jewelry in Class 14 (U.S. Serial No. 86/651975, “Wal-Mart’s mark”). The appeal by Wal-Mart wrestles with the issue of when goods can be considered “closely related.”

Registration of Wal-Mart’s GEORGE mark was refused because of an alleged likelihood of confusion with U.S. Registration No. 1940544 for the mark, owned by The George Company. The George Company’s mark is registered in connection with pet collar medallions and charms in Class 14. According to the Examining Attorney, Wal-Mart’s goods (jewelry and imitation jewelry) are closely related to The George Company’s pet collar medallions and charms because these goods are all essentially jewelry. The Examining Attorney argued that the goods have similar functions and that businesses offering jewelry for humans frequently offer jewelry for pets. To support the rejection and establish that the aforementioned goods travel in the same channels of trade, the Examining Attorney cited to some examples of retailers that sell both jewelry for humans and pet accessories. For example:

Friendship Collar - http://friendshipcollar.com/
Buddy G’s Pet Accessories - http://www.buddygs.com/wholesale.php
The Posh Puppy Boutique - http://www.poshpuppyboutique.com/Dog_Jewelry_s/817.htm

In response to the Office Action, Wal-Mart argued, among other things, that consumers would not associate pet collar medallions and charms with jewelry for human beings and that goods and services for humans are usually unrelated to goods and services for pets. Wal-Mart cited several cases supporting this position, as well as dictionary definitions. As to the channels of trade, Wal-Mart argued that the average consumer goes to the jewelry department or a jewelry store for jewelry for humans and goes to the pet department or pet store for pet products. Wal-Mart also argued that asserting that all products sold on the same site under a particular name must be related is tantamount to saying, for example, that all products sold on the Kohl’s or Amazon websites are somehow closely related goods for a trademark likelihood of confusion analysis.

The Examining Attorney upheld the rejection, citing additional examples of retailers that sell both jewelry for humans and pet accessories, maintaining that consumers are accustomed to seeing businesses offer jewelry for humans and pet collar medallions and charms under the same mark. As such, the Examining Attorney continued to assert that consumers would be prone to confusing the marks at issue.

Wal-Mart appealed to the TTAB on October 7, 2016. Wal-Mart emphasized that the Examining Attorney’s reasoning improperly aggregated under the “adornment” umbrella disparate items for very different species (i.e., pets and human beings). Wal-Mart also maintained that the Examining Attorney’s position wholly disregarded evidence of the public understanding of the term “jewelry” and where the public goes to buy jewelry.

The TTAB’s decision on Wal-Mart’s appeal could have a significant impact on the trademark strategy for businesses in the jewelry and pet industries, particularly if the goods at issue are found to be closely related.