4033086 Canada Inc.

Trademark Trial and Appeal Board

May 6, 2011

No. 77682924 (T.T.A.B. May. 6, 2011)

OPN

Mailed:
May 6, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re 4033086 Canada Inc.
________

Serial No. 77682924
_______

J. Rodman Steele, Jr. and Karen C. Kline of Novak Druce +
Quigg LLP.

Nicholas Altree, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Holtzman, Zervas and Ritchie, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
4033086 Canada Inc. (“applicant”) filed an application
(Serial No. 77682924) for registration on the Principal
Register of the mark BOCA (in standard character form) for
the following International Class 20 goods:
clothing, namely, men's, women's, boys' and
girls' tops, blouses, shirts, dresses, suits,
skirts, pants, shorts, sweaters, coats, jackets,
blazers, vests, turtlenecks, robes, coats,
sweatshirts, t-shirts, polo shirts, warm-up
pants, tracksuits, jeans, jean shirts,
undergarments, sleepwear, socks, stockings,
scarves, ties, hats, caps, and gloves.
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 77682924
2
Applicant claims a bona fide intention to use its mark in
commerce pursuant to Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
The examining attorney has issued a final refusal
refusing registration under Section 2(d) of the Trademark
Act, 15 U.S.C. 1052(d), in view of the following three
registrations:
BOCA CLASSICS (Registration No. 2004784) for
“men's casual and activewear, namely shirts,
shorts, pants and sweaters” in International
Class 25;

BOCA CLASSICS (Registration No. 2658944) for
goods including “ladies casual wear, namely,
shirts, shorts, pants, dresses, skirts and
sweaters; men's dress apparel, namely, sport
coats, slacks, dress shirts and neck ties” in
International Class 25; and

BOCA CLASSICS (Registration No. 3173670) for
“footwear, belts, swimwear, sleepwear, robes,
socks and men’s underwear” in International Class
25.

Each registered mark is in standard character form;
registrant has disclaimed the word CLASSICS in each
registration; and all three registrations issued to BDSRCO,
Inc. (“registrant”).
Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
have filed briefs. The refusal to register is affirmed.
Serial No. 77682924
3
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key, although not exclusive, considerations
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Consent Agreement
A primary issue in this appeal is the consideration
due a consent agreement entered into between registrant and
applicant’s predecessor in November 2001, well before
applicant filed the present application.1 We provide the
following background on the consent agreement.

1 According to the declaration of applicant’s attorney, J. Rodman
Steele, Jr., “Applicant is a successor-in-interest to 155873
Serial No. 77682924
4
On May 31, 1994, applicant’s predecessor, 155873
Canada, Inc., also identified as “Au Coton,” filed an
application for registration of the mark BOCA in connection
with “clothing; namely, men's, women's, and children's
pants, shorts, shirts, tops, sweaters, vests, jackets,
dresses, skirts, hats, belts, scarves and socks, and t-
shirts.” To overcome a Section 2(d) refusal in a prior
application owned by applicant's predecessor in view of
Registration No. 2004784, one of the registrations cited by
the examining attorney in the present application,
registrant and applicant’s predecessor executed a consent
agreement. (Exhibit A to request for reconsideration.)
The agreement states in relevant part:
WHEREAS, Au Cotton is the owner of the
following trademark applications and
registration:

Trademark Country Registration No.
(Application No.)
Registration Date
(Filing Date)
BOCA AUTHENTIC
COTTONS and
Design
United
States
1,835,494 May 10, 1994
BOCA AUTHENTIC United
States
(75/563,471) October 2, 1998
BOCA United
States
(75/563,472) October 1, 1998

(hereinafter collectively referred to as the Au
Coton Marks);

Canada, Inc. for the business associated with the mark ‘BOCA.’”
See applicant’s request to remand.
Serial No. 77682924
5
WHEREAS, BDSRCO is the owner of a trademark
registration for the following trademark
(hereinafter referred to as the BDSRCO Mark):

Trademark Country Registration
No.
Registration
Date
BOCCA
CLASSICS
United States 2,004,784 October 1,
1996

WHEREAS the parties hereto recognize that
the Au Coton Marks and the BDSRCO Mark are
sufficiently different and distinguishable as set
forth in the terms of this agreement; that the
marks co-exist in the market place; and that no
confusion to the consuming public is known; . . .

WHEREAS the parties hereto mutually desire
that an agreement be reached wherein confusion
between their respective marks would be averted;
. . .

1. The parties agree that the recitals are
true, correct and are hereby incorporated into
this agreement as if fully and completely set
forth in their entirety.

2. BDSRCO agrees that for as long as Au
Coton continues to use and/or registration of the
Au Coton Marks as referenced herein, BDSCRO shall
limit its use or future registration of the
BDSRCO Mark worldwide to “men’s casual and
activewear, namely shirts, shorts, pants and
sweaters”; and “... ladies casual wear, namely,
shirts, shorts, pants, dresses, skirts and
sweaters; men’s dress apparel, namely, sport
coats, slacks, dress shirts and neck ties.”. . .

3. BDSRCO agrees not to challenge Au Coton
in its use or registration of the Au Cotton
Marks, that BDSRCO will only employ the word
“BOCA” within the BDSRCO Mark, and that BDSRCO
will neither use nor register as a trademark the
term “BOCA” alone or together with the words
“AUTHENTIC” or “COTTONS.” Provided BDSRCO
adheres to these terms and the scope of goods
enumerated in Paragraph 2 above, Au Cotton agrees
Serial No. 77682924
6
not to challenge BDSRCO’s use or registration of
the BDSRCO Mark. . . .

5. This agreement shall inure to the benefit
and be binding upon the parties and their
respective licensees and assigns . . . .

155873 Canada, Inc.’s (or Au Coton’s) earlier
application (application Serial No. 75563472) for the mark
BOCA later matured into U.S. Registration No. 2,580,568
(“the ‘568 registration”) on June 18, 2002. The Office
cancelled Registration No. 2,580,568 on March 21, 2009 for
a failure to file a Section 8 declaration, which was due by
June 18, 2008. Applicant filed the present application on
March 4, 2009.
The BOCA mark identified in the agreement is, of
course, identical to the mark which is the subject of
applicant’s present application. The registration record
for the ‘568 registration for BOCA, made of record with the
request for reconsideration filed on June 3, 2010, lists
the following goods: “clothing, namely, men’s women’s and
children’s pants, shorts, shirts, tops, sweaters, vests,
jackets, dresses, skirts, hats, belts, scarves and socks,
and t-shirts.”2 The following goods in the present BOCA

2 The subject goods for the BOCA AUTHENTIC COTTONS and Design and
BOCA AUTHENTIC marks are essentially the same as those for the
BOCA mark.
Serial No. 77682924
7
application are not within, or encompassed by, the goods of
the ‘568 registration:
suits, coats, vests, sweatshirts, tracksuits,
stockings, scarves, hats, caps and gloves.

As to these goods, applicant argues that “… the prior
consent agreement between the parties includes an implied
consent to the use and registration by Applicant of the
present Application for the same mark and goods as those
identified in the agreement” and should be considered in
addressing the du Pont factor concerning the market
interface between applicant and registrant. Brief at 11.3
According to applicant, the marks of the present
application and the ‘568 registration are identical and the

3 Applicant also argues that as evidence that “the prior consent
agreement and the intent of the agreement continues to apply, …
both parties have continued to perform in accordance with the
terms of the agreement,” noting that registrant has not expanded
its goods in later filed applications beyond those specified in
the consent agreement “or [they] fall within the zone of
reasonable expansion.” Brief at 11 – 12. Also, “to Applicant’s
knowledge, the Registrant has not attempted to use or register
the BOCA mark alone in accordance with terms of the prior
agreement.” Id. at 12. It concludes that “based on the terms of
the prior agreement and the subsequent conduct of the parties, it
may be inferred that a meeting of the minds and agreement was
reached by the parties that Applicant and Registrant do not
believe confusion is likely between the BOCA and BOCA CLASSICS
marks based on their actual market interface and the parties
consent to each other’s use and registration of their respective
marks.” Id.
We do not find applicant’s arguments persuasive because it does
not follow that registrant has consented to the registration of
the present application simply because it continues to comply
with the terms of a no longer binding consent agreement. Also,
applicant is not clear as to what later-filed applications it is
referring to in support of its argument.
Serial No. 77682924
8
goods are legally identical; the goods are “of the same
nature in clothing” or are encompassed by the goods
identified in the ‘568 registration.
We are not persuaded by applicant’s arguments that
registrant’s consent extends to the mark of the present
application. While the agreement itself does not list
specific goods for which registrant has provided its
consent to register and use BOCA, the agreement does
identify the application for BOCA which resulted in the
‘568 registration. We therefore consider registrant’s
consent to use and register vis-à-vis the BOCA mark to only
extend to those goods which are the subject of the BOCA
application. Because the present application includes
goods different from those set forth in the ‘568
registration, the plain meaning of the contract shows that
registrant’s consent does not extend to those additional
goods found in the present application. In so finding, we
reject applicant’s argument that the additional goods of
the present application are legally identical to the goods
of the ‘568 registration. Several of such goods involve
articles of clothing (e.g., tracksuits) which have
different uses than those goods of the registration. Other
goods, such as scarves, are more in the nature of clothing
accessories than articles of clothing.
Serial No. 77682924
9
Moreover, there is no evidence in the record to
support applicant’s assertion that such goods should be
considered legally identical to goods identified in the
‘568 registration, and applicant has not provided any
authority for finding that such goods are legally
identical. In this regard, applicant has only provided a
few statements from its attorney in its brief, unsupported
by evidence. In and of themselves, these are not
persuasive.4 Also, to the extent that applicant is arguing
that the consent to use in the application allows applicant
to register BOCA on any of the goods identified in the two
applications and the registration, we are not persuaded; a
consent to use the mark is not a consent to registration of
the mark, and moreover, applicant has not established that
applicant has continuously used the BOCA mark since the
effective date of the agreement, i.e., since November 2001.5
(Applicant, at p. 6 of its brief, states that it filed the
present application “[a]s part of its continued efforts to
resume use of the mark ….”) Thus, in view of the

4 We recognize that the examining attorney stated that
applicant’s goods are legally identical to the goods of the BOCA
CLASSICS registrations. However, it is not clear to us how, for
example, applicant’s “gloves” are legally identical to
registrant’s “swimwear.”
5 While Mr. Steele states in his declaration that the BOCA mark
is in use, there is no evidence in the record suggesting that the
mark has been in continuous use.
Serial No. 77682924
10
foregoing, we find that the consent agreement does not
provide registrant’s consent to the registration of
applicant’s mark in the present application.
We now consider each of the relevant du Pont factors
as they pertain to the question of likelihood of confusion.
The Goods, Channels of Trade and Classes of Consumers
Many of the goods listed in the application are
identical to or are encompassed within the goods recited in
each cited registration, and there are no trade channel
restrictions in any of the identifications of goods. The
registrations are presumed to encompass all goods of the
type described, to move in all normal channels of trade and
to be available to all potential customers, which in this
case, would be the general public. In re Elbaum, 211 USPQ
639 (TTAB 1981). The trade channels and classes of
consumers of applicant’s goods hence overlap with the trade
channels and classes of consumers of registrant’s goods.
The du Pont factors concerning the similarity of
goods, trade channels and classes of consumers are
therefore resolved against applicant.
The Marks
We next consider the similarities of the marks.
Specifically, we consider whether applicant's mark and the
registered marks, when viewed in their entireties, are
Serial No. 77682924
11
similar in terms of appearance, sound, connotation and
commercial impression. In cases such this case, where the
applicant's goods are identical in part to the registrant's
goods, the degree of similarity between the marks which is
required to support a finding of likelihood of confusion is
less than it would be if the goods were not identical.
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Registrant’s three cited marks are each BOCA CLASSICS
and applicant’s mark is BOCA, which is identical to the
first term in registrant’s marks. “Classics” is defined in
dictionary.com (of record) as “an article, as of clothing,
unchanging in style: Her suit was a simple classic.” The
term CLASSICS informs the purchaser that the goods on which
the marks are used are classical in style, that is, that
they are unchanging in style. Thus, we find that CLASSICS
is a descriptive term which indicates to the consumer that
registrant’s goods are a traditional or more conservative
line of BOCA clothing, and that consumers will accord less
weight to CLASSICS than BOCA in perceiving and recalling
registrant’s marks.6 BOCA therefore is the dominant term in
registrant’s marks. See In re National Data Corp., 753

6 Indeed, as noted at the beginning of our opinion, registrant
has disclaimed CLASSICS in each of its marks.
Serial No. 77682924
12
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided that the ultimate conclusion rests on a
consideration of the marks in their entireties.) Because
applicant’s entire mark is identical to the dominant term
of registrant’s marks, we find the marks to be highly
similar in appearance, sound, meaning and commercial
impression. The du Pont factor regarding the similarity of
the marks is resolved against applicant.
Number and Nature of Similar Marks in Use on Similar Goods
Applicant has submitted (a) a listing of search
results for registrations and applications containing the
term BOCA on the Office’s TESS electronic search system,
and (b) a number of third-party registrations, to
demonstrate that the term BOCA is a weak term as used in
connection with clothing. The listing of registrations and
applications on the TESS database have no probative value
because it is not apparent on what goods or services the
marks are for and because pending applications have “no
probative value other than as evidence that the application
was filed.” Edwards Lifesciences Corp. v. VigiLanz Corp.,
94 USPQ2d 1399, 1403 n.4 (TTAB 2010), citing, In re
Phillips Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002).
Serial No. 77682924
13
Also, the listing includes registrations marked “dead.” In
re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261 (TTAB 2011)
(“dead” registrations have no probative value at all.). As
for the third-party registrations, absent evidence of
actual use (and there is no evidence of actual use in the
record), third-party registrations have little probative
value because they are not evidence that the marks are in
use on a commercial scale or that the public has become
familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973) (the
purchasing public is not aware of registrations reposing in
the U.S. Patent and Trademark Office); and In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983). Further,
only one third-party registration identifies articles of
clothing in the identification of goods; this single
registration does not persuade us of any weakness of BOCA
in the context of clothing. Thus, we accord the registered
marks at least the same level of protection accorded to
most inherently distinctive registered marks, and find the
du Pont factor regarding the number and nature of similar
marks in use on similar goods to be neutral.
Conditions of Purchase
It is well settled that purchasers of casual, low cost
ordinary consumer items, such as the clothing items listed
Serial No. 77682924
14
above, are held to a lesser standard of purchasing care and
are more likely to be confused as to the source of the
goods. See Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir.
1984). The du Pont factor regarding the conditions of
purchase is resolved against applicant.7
Lack of Actual Confusion
Applicant states that there have been no instances of
actual confusion between the marks. Brief at 15 - 16. It
is not necessary to show actual confusion in order to
establish likelihood of confusion. See Weiss Associates
Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025
(Fed. Cir. 1990). Also, we note that applicant’s BOCA
registration was cancelled under Section 8 of the Trademark
Act, ostensibly due to non-use of the mark, the present
application is based on the intent-to-use provisions of the
Trademark Act, and Mr. Steele, in his declaration of
August 9, 2010, does not indicate how long applicant’s mark

7 The cases applicant cites in support of its contention that
buyers of apparel have been previously held to be sophisticated
purchasers all are circuit court cases which involve questions of
trademark infringement. The present proceeding involves the
question of registration only, and we consider the
identifications of goods in the application and registration in
our determination. Because the identified goods are not
restricted to high cost items, we consider them to also include
low cost items to which consumers would give little reflection
before making purchases.

Serial No. 77682924
15
has been used in commerce (or even on what kinds of
clothing). Thus, although applicant and registrant
acknowledged in the consent agreement of November 2001 that
“no confusion to the consuming public is known,” the record
does not contain any evidence of use of applicant’s mark
since then until Mr. Steele’s declaration. Additionally,
on the record before us, there is no evidence as to whether
there has been any opportunity for confusion to occur - we
have no information as to the extent of applicant’s use, or
that of registrant. Applicant's argument regarding a lack
of actual confusion therefore is unpersuasive, and the du
Pont factor regarding actual confusion is neutral.
Balancing the Factors
When we consider the record and the relevant
likelihood of confusion factors, and all of applicant's
arguments relating thereto, we conclude that, when
potential purchasers of applicant's and registrant’s goods
encounter the applied-for and registered marks for their
respective goods, they are likely to believe that the
sources of these goods are in some way related or
associated with one another. As a result, there is a
likelihood of confusion.
DECISION: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.