Likelihood of confusion under Section 2(d) of the Lanham Act is analyzed at the USPTO using the thirteen so-called DuPont factors. In context of an opposition proceeding, the fifth DuPont factor enables an Opposer to expand the scope of protection afforded its pleaded mark by adducing evidence of “[t]he fame of the prior mark (sales, advertising, length of use)”; while the sixth DuPont factor allows an Applicant to contract that scope of protection by adducing evidence of “[t]he number and nature of similar marks in use on similar goods.” See Made in Nature v. Pharmavite, 2022 USPQ2d 557, *17 (TTAB 2022) (quoting DuPont, 177 USPQ at 567).

In determining the strength of a mark, both its conceptual strength, based on the nature of the mark itself, and its commercial strength, based on marketplace recognition of the mark, are considered. New Era Cap v. Pro Era, 2020 USPQ2d 10596, *10 (TTAB 2020); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (noting a trademark's strength is measured both by its “conceptual strength” and its “marketplace strength”).

“In opposition proceedings, the opposer has the burden of proving a likelihood of confusion by a preponderance of the evidence.” Stratus Networks v. UBTA-UBET Commc'ns. Inc., 955 F.3d 994, 998 (Fed. Cir. 2020) (citing Cunningham v. Laser Golf, 222 F.3d 943, 951 (Fed. Cir. 2000)).

AXIO Opposition

Giorgio Armani S.p.A. opposed the application by SEH International, Ltd. to register the stylized AXIO mark for sports equipment including shirts and soccer balls, based on Armani's existing word mark registrations for AX and AX ARMANI EXCHANGE in connection with a variety of products including the clothing. Giorgio Armani S.p.A. v. SEH Int'l, Ltd., Opposition No. 91253443 (TTAB Sept. 29, 2022).

Strength of Armani's AX Mark

The TTAB found that Armani's AX mark had a “conceptually arbitrary nature” in connection with clothing. Other third-party registrations made of record “comprise the initial letters A-X with multiple other letters suggesting complete words that engender commercial impressions that greatly differ from the term AX alone.”

As for commercial strength in the marketplace, the TTAB found that “ARMANI EXCHANGE” was a “ubiquitous presence” with the AX mark in Armani's advertising. But the “AX” mark was “always the larger element when accompanied by ARMANI EXCHANGE.” Compare Bose Corp., 63 USPQ2d at 1306-07 (“the consumer is presented through the advertising and other promotional material with frequent references to the marked product standing alone and apart from the famous house mark” allowing the consumer to disassociate the product mark from the house mark) with ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1245 (TTAB 2015) (“It is well-settled that, where, as here, a party's advertising and sales data is based on materials and packaging in which the mark at issue is almost always displayed with another mark, such data does not prove that the mark at issue possesses the requisite degree of consumer recognition.”). The TTAB found it “difficult to discern the strength of AX alone for clothing” because of “a mixed record demonstrating that sometimes the expression ARMANI EXCHANGE appears with AX on clothing, but sometimes it does not.”

In addition, the TTAB found that three similar marks (i.e., AXE, AX Paris, and AXNY) that were made of record by SEH fell “well short of the powerful volume of evidence found convincing in Jack Wolfskin and Juice Generation” that a mark lacked commercial strength. Primrose Ret. Cmtys., LLC v. Edward Rose Sr. Living, LLC, 122 USPQ2d 1030, 1034–36 (TTAB 2016) (weakness found based on at least 85 actual uses of ROSE-formative marks for similar services, eight similar third-party registrations, expert testimony and other evidence regarding the common nature of ROSE-formative marks in the industry, and testimony by opposer that it did not vigorously enforce its mark).

The TTAB concluded that Armani is a successful company and the AX mark “likely has some commercial strength,” but that AX is not a famous mark.

Similarity or Dissimilarity of the Marks

Acknowledging that both parties' marks contain the letters “AX,” the TTAB found that the marks in their entireties were dissimilar and purchasers will not ascribe a common source or sponsorship to the apparel sold thereunder. In particular, the TTAB discussed the stylization the letters in the applied-for AXIO mark.

The sweeping, arcing line of the exaggerated ascending stroke in Applicant's letter “X” creates a connection between the letters preceding and following it. The ascending stroke touches the “A” and reaches over the top of the “I” such that there is a visual connection from left to right, leading the eye across the complete mark, not just the first two letters. Further, because the sans-serif font begins with the first letter and is continued by the ending “IO,” and there is no additional or exaggerated space between the “X” and the following “I,” there is no reason to believe that a consumer is likely to view the “IO” portion of the mark as the number ten, nor has Opposer adduced evidence that a consumer would do so.

          We find that while both marks are similar in appearance to the extent they contain the letters “AX” and may be presented in the same stylization, they also differ in appearance because of the additional “IO” in Applicant's mark which is visually connected to the rest of the mark.

In addition, Armani admitted that its AX mark is pronounced as “ā eks” (i.e., as the two separate letters “A” and “X”), and “has no meaning, albeit it originally started as an abbreviation of the expression ARMANI EXCHANGE.”

The AXIO mark, on the other hand, is pronounced as “ak'sēō” as the natural pronunciation of “axio.”

Also, the TTAB found that the following third-party registrations made of record were “as close or closer in similarity to Opposer's mark than is Applicant's mark: AXO, AXIOS, AXT, and AXION.” And Armani's Intellectual Property Manager testified that these marks did not “present an issue” from Armani's perspective for various reasons including the differences in those marks' appearances, sounds, meanings, and overall commercial impressions.

          Although we find the respective goods are in-part identical and presumed to be sold in the same channels of trade to the same classes of consumers, and Opposer's AX mark is entitled to a somewhat enhanced scope of protection, these factors are outweighed by the dissimilarity of the marks.

No Actual Confusion

With respect to evidence of actual confusion, or lack thereof; the presence or absence of actual confusion might have little probative value if there has not been a meaningful opportunity for actual confusion to occur. See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). Assuming that the AX and AXIO marks have been in contemporaneous use for only a little over three years, the TTAB found that this would afford little opportunity by itself for actual confusion to have occurred. See Primrose Ret. Cmtys., 122 USPQ2d at 1039-40. So, the TTAB found this factor to be neutral.

No Likelihood of Confusion

The TTAB concluded that confusion is unlikely. See, e.g., Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1290 (Fed. Cir. 2016) (affirming Board dismissal of opposition based on dissimilarity of the marks MAYA and MAYARI); Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1461 (Fed. Cir. 1998) (affirming Board dismissal of opposition based on dissimilarity of the marks CRISTAL and CRYSTAL CREEK); Kellogg Co. v. Pack'em, 21 USPQ2d at 1142 (affirming Board dismissal of opposition based on dissimilarity of the marks FROOTEE ICE and elephant design and FRUIT LOOPS); Keebler Co. v. Murray Bakery Prods., 866 F.2d 1386, 9 USPQ2d 1736, 1739- 40 (Fed. Cir. 1989) (affirming Board dismissal of opposition based on dissimilarity of the marks PECAN SANDIES and PECAN SHORTEES in commercial impression); Sock It To Me, Inc. v. Fan, 2020 USPQ2d 10611, at *13 (TTAB 2020) (dismissing likelihood of confusion claim based on dissimilarity of the marks SOCK IT TO ME and SOCK IT UP).

No Dilution

The TTAB also found that Armani's AX mark was not famous for dilution purposes.

Thus, finding no likelihood of confusion or dilution, the TTAB dismissed Armani's opposition.

Examples of the respective AXIO and AX marks are reproduced below

AXIO

AX ARMANI EXCHANGE

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