Access Plus Fashions Inc.

Trademark Trial and Appeal Board

Aug 25, 1999

No. 75135254 (T.T.A.B. Aug. 25, 1999)

Paper No. 11
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 25, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Access Plus Fashions Inc.
________
Serial No. 75/135,254
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Jeffrey M. Kaden of Gottlieb, Rackman & Reisman, P.C., for
Access Plus Fashions Inc.
Jason Turner, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Cissel, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 18, 1996, applicant applied to register the
mark shown below
On the Principal Register for "jewelry," in Class 14. The
basis for filing the application was applicant’s assertion
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that it possessed a bona fide intention to use the mark in
commerce. The Examining Attorney refused registration
under Section 2(d) of the Act on the ground that
applicant’s mark, if used in connection with jewelry, would
so resemble the mark shown below,
which is registered1 for "jewelry," that confusion would be
likely.
Applicant responded to the refusal to register by
arguing that confusion would not be likely. Along with its
response on the merits of the refusal, applicant submitted
an amendment to allege use on the goods as of April 1,
1996.
The Examining Attorney accepted the amendment to
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allege use, but was not persuaded by applicant’s arguments
on the issue of likelihood of confusion. The refusal to
register under Section 2(d) was made final in the second
Office Action.
Applicant timely filed a Notice of Appeal, attached to
which as "Exhibit A" were copies from what appears to be a
search report of third-party registrations. Applicant
characterizes this exhibit as evidence of "uses of stylized
’V’ designs."
The Examining Attorney filed his brief, and applicant
filed a reply brief, but applicant did not request an oral
hearing before the Board. Accordingly, we have resolved
this appeal based on careful consideration of the written
record and arguments.
Our determination of whether the mark in the instant
application should be refused registration under Section
2(d) of the Act is based on analysis of all the probative
facts and evidence which are relevant to the factors the
Court identified in In re E. I. duPont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973), as bearing on the
issue of likelihood of confusion. In any likelihood of
confusion analysis, two key considerations are the

1 Registration No. 1,586,691,issued on the Principal Register to
Village Originals on March 13, 1990; combined affidavit under
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Sections 8 and 15 accepted and received.
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similarities between the marks and the similarities between
the goods. Federated Food, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
In the instant case, we hold that confusion is likely
because applicant’s mark creates a commercial impression
similar to that engendered by the registered mark, and the
products with which these marks are used are the same.
It should be noted at the outset that when the goods
or services of the respective parties are closely related
or identical, as they are in the case hand, the degree of
similarity between marks required to support a finding of
likelihood of confusion is not as great as would apply in
situations where the goods or services are diverse. ECI
Division of E Systems, Inc. v. Environmental Communications
Inc., 207 USPQ 443 (TTAB 1980).
Turning then, to the marks, we note that while they
are clearly not identical, the stylized presentation of the
letters "V" and "O" which constitutes the registered mark
appears in almost the same form in the middle of the mark
applicant seeks to register. Moreover, even if the
stylized presentation or design in the registered mark were
not interpreted as a combination of these two letters, the
design appearing in applicant’s mark is strikingly similar.
Although these two trademarks, when considered in their
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entireties, do not have similar pronunciations, and their
appearances have obvious differences, the inclusion of the
registered design element as the central component of
applicant’s mark creates a strong visual similarity. The
registered mark appears to be arbitrary in connection with
jewelry. Jewelry is a product purchased by ordinary
consumers, who will not necessarily compare these marks on
a side-by-side basis, and who do not necessarily have
perfect recall, especially when it comes to trademarks used
on goods purchased impulsively.
As noted by the Examining Attorney, the incorporation
of the entire arbitrary registered trademark into the
composite mark sought to be registered does not avoid the
likelihood of confusion, it creates it. The Wella
Corporation v. California Concept Corporation, 194 USPQ 419
(CCPA in 1977).
When applicant’s mark, incorporating the registered
mark, or a very close replica of it, is used in connection
with the identical goods, namely jewelry, confusion is
plainly likely. Prospective purchasers of such products
who are familiar with the registered design mark in
connection with these goods and who are then presented with
applicant’s mark, which incorporates what is essentially
the same mark into the name "CAROLINE," are likely to
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understand or interpret applicant’s mark as an indication
that the jewelry bearing it also comes from the same source
as jewelry bearing only the design mark. They might think
that applicant’s mark identifies another line of the goods
from the same manufacturer who sells jewelry under the
registered mark, or that applicant’s mark is an updated or
newer trademark which developed from or grew out of the
previously registered mark, perhaps for a new or different
product line, but such people are clearly likely to assume
some association or connection between the sources of
jewelry products bearing marks which consist of or
incorporate the same distinctive design mark.
As noted above, applicant attached to its Notice of
Appeal copies of what appear to be a search report
featuring third-party registrations. The Examining
Attorney properly objected to consideration of this
evidence, and we have not considered it. As the Examining
Attorney points out, a search report is not credible
evidence of the existence of the registrations listed in
such a report. In order to make such registrations
properly of record, copies of the registration themselves,
or the electronic equivalent from Patent and Trademark
Office records, must be submitted. In re Smith and
Mahaffey, 31 USPQ2d 1531 (TTAB 1994). Moreover, evidence
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submitted with an appeal brief is untimely under Trademark
Rule 2.142(d). It does not become part of the record, and
we have not considered this evidence in this case. Even
more significant is the fact that even if such
registrations had been timely introduced into the record in
the proper way, the registrations would not be entitled to
much weight on the question of likelihood of confusion. In
re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983). They
would not be evidence of what happens in the marketplace or
that the public is familiar with the use of the marks
therein. National Aeronautics and Space Administration v.
Record Chemical Co., 185 USPQ 563 (TTAB 1975).
Applicant argues that when these two marks are
considered in their entireties, they do not look or sound
alike. Applicant points to the fact that the name
"CAROLINE" is an integral and significant portion of its
mark, and that to ignore this fact would clearly violate
the rule against dissecting trademarks when comparing them
to determine whether confusion is likely. Further,
applicant contends that its mark is used only on hang tags
and packaging for its jewelry, rather than being stamped
directly onto the goods, as the registered mark is.
Applicant goes on to argue that purchasers of jewelry are
not likely to be confused by the marks as to the source of
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the respective parties’ goods because trademarks are not as
significant or important to purchasers of jewelry, who are
highly sophisticated, as they are to ordinary consumers in
other fields of commerce.
None of applicant’s arguments is persuasive. As we
discussed above, it is when the marks are compared in their
entireties that we find confusion to be likely. Confusion
would plainly be unlikely if the registered design mark
were compared to the name "CAROLINE" in a form that did not
feature a simulation of the registered design mark in the
center of the name. This is not the case before us,
however. As to applicant’s argument that jewelry
purchasers are sophisticated consumers to whom trademarks
are not as significant as they are to ordinary consumers,
there is no evidence in this record in support of such a
claim. Further, regarding applicant’s contention that
confusion is not likely because the marks are used in
connection with the respective goods in different manners,
we note that neither the cited registration nor the
application at hand reflects any limitation or restriction
regarding the manners in which these marks are used. In
the absence of some limitation or restriction of this kind,
we must determine whether confusion is likely between the
marks on the basis of the goods as they are identified in
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the application and registration, respectively. In re
Elbaum, 211 USPQ 639 (TTAB 1981). When we do this, there
is absolutely no distinction to be drawn between the
products on which applicant and registrant use their marks.
Even if we had any doubt on the issue of likelihood of
confusion, it would necessarily have to be resolved in
favor of registrant and against applicant, who had a legal
duty to select a mark that is totally dissimilar to
trademarks already in use. Burroughs Wellcome Co. v.
Warner-Lambert Co., 203 USPQ 191 (TTAB 1979).
Because applicant has incorporated into the mark it
seeks to register what is essentially a close replica of
the entire distinctive design which is already registered
for the identical goods, we hold that confusion is likely.
Accordingly, we affirm the refusal to register under
Section 2(e)(1) of the Act.
R. F. Cissel
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial & Appeal Board
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