In In re Strategic Partners, Inc., the key issue before the Trademark Trial and Appeal Board (TTAB) was whether Strategic Partners' "ANYWEAR" trademark for footwear presents likelihood of confusion with another party's "ANYWEAR BY JOSIE NATORI & Design" mark for various apparel items. In particular, the TTAB considered the relevance of Strategic Partners' existing registration for "ANYWEARS" for footwear and other items in the likelihood of confusion analysis.

The TTAB reviewed this case on appeal from the trademark examining attorney's final refusal to allow Strategic Partners' registration of the mark "ANYWEAR" in a slightly stylized form for footwear. The examining attorney refused registration of this mark, finding that it would cause likely confusion with an existing registration for "ANYWEAR BY JOSIE NATORI & Design" for jackets, shirts, pants, stretch T-tops and stoles. The examining attorney found likelihood of confusion because, among other things, the marks are similar and the goods are related. While Strategic Partners owned an existing registration for the mark "ANYWEARS," which has coexisted with the registered "ANYWEAR BY JOSIE NATORI & Design" mark for more than five years, the examining attorney found that the new mark eliminated the few differences that made the "ANYWEARS" mark and cited mark distinguishable. Strategic Partners appealed.

The TTAB reversed the examining attorney's refusal to register the ANYWEAR mark. In its decision the TTAB considered all factors relevant to determining likelihood of confusion under In re E. I. du Pont de Nemours & Co. (476 F.2d 1357 (C.C.P.A.1973)). The TTAB found that under ordinary circumstances, these factors would support a finding of likelihood of confusion. However, the TTAB found that the existing ANYWEARS registration rendered this case unusual. Applying the 13th du Pont factor, which allows consideration of "any other established fact probative of the effect of use," the TTAB determined that there is not a likelihood of confusion between the applied-for and cited marks because Strategic Partners already owned a registration for a substantially similar mark for the identical goods and that it had coexisted for over five years with the already registered ANYWEAR mark.

This TTAB decision suggests that ownership of an existing registration for a substantially similar mark may aid applicants in overcoming likelihood of confusion refusals in certain circumstances. This case also provides an example of use of the catch-all factor in the du Pont analysis.