Overview: An Oregon man was denied a trademark for his design of a seabird with prey in its mouth by the United States Trademark Trial and Appeal Board. Gubbala v. Abercrombie & Fitch Trading Co. Will this trademark fly in the face of consumers?
Gubbala v. Abercrombie & Fitch Trading Co. Case Facts
In 2019, Srinivasa Rao Gubbala applied for a trademark to be used on his apparel brand. The design is multi-colored and features a gannet, a type of seabird, holding a fish in its mouth while flying. Abercrombie & Fitch Trading Co., an international apparel brand, objected to the application on the grounds that the design was too similar to its own mark, a monochromatic silhouette of a seabird, also with its wings spread. Abercrombie opposed the registration, alleging that consumers would be confused and its brand would be diluted.
The United States Trademark Trial and Appeal Board (TTAB) ruled that Gubbala’s gannet would leave the same commercial impression as Abercrombie’s design/logo. In the decision it said that Gubbala’s mark is a gannet with outstretched wings and Abercrombie was a seabird with outstretched wings, and both were oriented to the side with birds head and wings facing to the left with wings outstretched above the body. It also noted that there are over 350 registered marks with bird designs that contain other design elements and language that convey different commercial impressions.
Early in 2024, Gubbala filed suit in the Southern District of Ohio seeking to vacate the order by the TTAB, arguing that the TTAB engaged in amateur ornithology and did not take into account the differences in detail between his proposed mark and Abercrombie’s. He also argued that if the decision were to be upheld, all avian advertising and branding insignia would fall prey to the Abercrombie trademark.
Would Upholding the TTAB Decision Engulf Competition?
When consumer (or avian) confusion is an issue in a trademark action, consumer surveys may swoop in. Surveys can provide reliable measures of consumer impressions in cases like this one, for either the plaintiff or defendant. For example, a survey could be used in this action to measure whether Gubbala’s seabird insignia would cause future consumers to be confused about the origin or affiliation of the product or to measure any dilution of Abercrombie’s trademark resulting from Gubbala’s use of the seabird mark.
If you require consumer surveys to measure likelihood of confusion or dilution in a regulatory dispute or in trademark litigation, reach out to MMR Strategy Group.