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Bottom line: The Board found that “VANS / “OFF THE WALL” & device” is not similar to “off the wall”.

The applicant filed a trademark application for “VANS / “OFF THE WALL” & device” as shown below designating goods and services in Classes 9, 14, 18, 25, 35 and 41, including clothing, footwear, bags and clothing accessories.  The examiner cited two earlier registrations of a same owner for “off the wall” designating, clothing, bags, etc., and refused the application on the ground that the marks are similar to each other.

<Applied-for mark>

The designated goods of the marks are partially identical and so the question is whether the marks are distinguishable or not. 

The Board observed the applied-for mark and found as follows:

-　The applied-for mark consists of stylized “VANS” on the upper part and “OFF THE WALL” on the lower part in white within a skateboard-like design, and is unified as a whole in appearance.  The letter element of the applied-for mark will be pronounced [ba-n-zu-o-fu-za-wo:-ru] in one breath.
-　There is no reason that “OFF THE WALL” of the applied-for mark solely functions as a source identifier.
-　Therefore, it will be natural that the applied-for mark is taken unified as a whole.
-　It will be inappropriate for the Examiner to extract “OFF THE WALL” from the applied-for mark and recognize that the applied-for mark is similar to the cited marks.

So the Board reversed the refusal, and granted registration of “VANS “OFF THE WALL” & device”.