Marshall Gerstein Successfully Defends Trademark of Clothing Company
In 2013, the Spanish fashion company Desigual opposed registration of the trademark DISIDUAL, owned by a growing Washington-based lifestyle company seeking to protect its “distinct individual” apparel for outdoors enthusiasts and active free spirits. Marshall Gerstein has dedicated hundreds of pro bono hours to defending Disidual’s mark in the trial and recently secured a favorable decision from the Trademark Trial and Appeal Board (TTAB).
The TTAB dismissed Desigual’s likelihood of confusion claim. Notably, the TTAB focused on the different pronunciation of the marks. The TTAB noted that “desigual” is a Spanish word with a known pronunciation (dezzy-GWAL) and DISIDUAL is a coined term, likely to be pronounced “di-SID-jew-uhl,” similar to the term “individual.” “When a mark is a recognized word, even in a foreign language, the principle that there is no correct pronunciation of a mark does not apply,” the opinion stated. The TTAB also noted that, when a mark is not a recognized word and the weight of the evidence suggests that consumers would pronounce it a particular way, it is error to ignore such evidence. The distinct pronunciation of the marks, combined with other factors, led the TTAB to conclude that Desigual had failed to prove that a likelihood of confusion existed.