TIGER vs. PUMA and GAP vs. MIND THE GAP
This article discusses two interesting trade mark similarity cases, one in the US and the other in the UK:
USA – TIGER v PUMA, leaping cats
Tiger Woods, arguably the world's greatest-ever golfer, is involved in a trade mark dispute in the US. Tiger filed an application to register a trade mark which comprises the words SUN DAY RED and a Leaping Cat Device (which appears to be a Tiger with stripes). This logo and Puma's logo appear below:
Puma filed an opposition against Tiger's SUN DAY RED & Leaping Cat Device application based on its Puma Device. Here are some aspects of the case that have been discussed in the media:
- A new venture: The SUN DAY RED & Leaping Cat Logo, a brand that was only launched in 2024, apparently represents Woods' first 'independent apparel venture' since he parted ways with Nike. It has been suggested that the Logo pays 'homage' to Tiger's nickname and his 13 major title wins (13 stripes).
- Extensive use and reputation: Puma was established way back in 1948, and the company has used its famous Leaping Cat Logo for decades. As a consequence, it is certainly arguable that Puma's trade mark is one of the more recognisable sports brands in the world.
- Confusion is likely: Puma has filed a formal notice of opposition to Woods' application with the United States Patent and Trademark Office ("USPTO"). In its opposition papers Puma argues that 'when U.S. consumers encounter the challenged marks in the marketplace in connection with the apparel, footwear, bogs, accessories and related goods and services, they are likely to mistakenly believe' that the products were 'endorsed, sponsored, or approved by Puma.'
- Likely consumers: The USPTO's analysis of the trade mark dispute is likely to 'centre on whether typical consumers could confuse the source of the products bearing these competing feline logos'.
- Overall impression: The USPTO will evaluate the overall commercial impression of the trade marks, considering both Puma's established minimalist Leaping Cat silhouette and Tiger's 13-lined Tiger Device (although the words SUN DAY RED should not be disregarded).
- Critical factors: These include the sports apparel sector context, distribution channels, price points, and consumer sophistication levels.
- Significant design differences: Whilst there are intentional design differences, for example opposite directional movement and varying levels of artistic detail, the differences must be significant enough to prevent confusion in actual purchasing environments.
- Actual confusion: The USPTO will be very interested in evidence of actual consumer confusion, relevant consumer surveys, and marketing channel overlap. The 'strength of PUMA's long-established mark will be weighed against Sun Day Red's deliberate differentiation efforts'.
- Trial date: The case is scheduled for trial in 2026, barring an earlier settlement agreement.
We look forward to the next episode!
UK - MIND THE GAP
Transport for London ("TFL"), the body that runs the London Underground and forever warns you to 'mind the gap' (as in do not be a klutz and fall onto the tracks whilst attempting to board a tube... not only will you look very silly, but it may even be quite painful), applied to register its ubiquitous warning/slogan MIND THE GAP as a trade mark. The application covered goods in class 9, including contact lenses, spectacles and eyewear (all useful if you want to mind the gap), as well as goods in class 18, including leather goods, bags, purses and wallets.
The apparel company Gap opposed the application on the basis of registered GAP incorporating trade marks and a likelihood of confusion, however, the Hearing Officer allowed TFL's application to proceed to registration for a range of specific goods in class 9 including eyewear, spectacles and class 18 for leather goods.
The right decision!
*Reviewed by Gaelyn Scott, Head of ENS' Intellectual Property Department
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
