4033086 Canada Inc.Download PDFTrademark Trial and Appeal BoardMay 6, 2011No. 77682924 (T.T.A.B. May. 6, 2011) Copy Citation 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. Copy with citationCopy as parenthetical citation