Apparel Limited, Inc.

Trademark Trial and Appeal Board

Oct 2, 2012

No. 85141193 (T.T.A.B. Oct. 2, 2012)

Mailed: 10/2/2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Apparel Limited, Inc.
________

Serial Nos. 85141163, 85141193 and 85141214
________

Kathryn Marshall of Wasserman, Comden, Casselman & Esensten for
Apparel Limited, Inc.

Tasneem Hussain, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Holtzman and Wellington,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Apparel Limited, Inc. filed, on September 29, 2010, intent-
to-use applications to register the marks CURVEE, CURVEY and
CURVEEY (in standard characters),1 all for “clothing, namely,
pants, denims, capri pants, cargo pants, shorts, skirts, skorts,
[and] active wear, namely, jogging outfits” (in International
Class 25).
The trademark examining attorney refused registration in
each application under Section 2(d) of the Trademark Act, 15

1 Application Serial Nos. 85141163, 85141193 and 85141214, respectively.
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. Nos. 85141163, 85141193 and 85141214

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U.S.C. § 1052(d), on the ground that applicant’s mark, when
applied to applicant’s goods, so resembles the previously
registered mark CURVY (in standard characters) for “clothing,
namely, shirts, fitted tops, jackets, trousers, skirts,
chemises, pajamas, nightgowns, camisoles, short robes, night
shirts, long wraps, bath robes; swimwear and underwear” (in
International Class 25)2 as to be likely to cause confusion.
The examining attorney also refused registration in each
application under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1), on the ground that applicant’s mark, when
applied to applicant’s goods, is merely descriptive thereof.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs.3
The appeals involve common issues of law and fact.
Further, the evidentiary records are identical. Accordingly, we
will issue a single decision on the appeals.

2 Registration No. 3105309, issued June 13, 2006 on the Supplemental
Register; Section 8 affidavit accepted.
3 Applicant’s brief in each case is accompanied by Exhibit A, which is
an excerpt of registrant’s website. The examining attorney objected
to this submission as untimely. Trademark Rule 2.142(d) provides that
the Board will ordinarily not consider additional evidence filed after
the appeal is filed. Accordingly, the objection is sustained, and we
have not considered this evidence in reaching our decision. We hasten
to add, however, that even if considered, the evidence does not compel
a different decision on the merits. See In re Bercut-Vandervoort &
Co., 229 USPQ 763, 764 (TTAB 1986) (an applicant may not restrict the
scope of goods in an otherwise unrestricted registration by extrinsic
evidence).
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Before turning to the substantive merits of the appeals, we
first turn our attention to a procedural matter involving the
third-party registration evidence submitted by applicant. With
its response filed on July 11, 2011, applicant attached several
exhibits, including printouts of search results retrieved from
the Office’s TESS (Trademark Electronic Search System) database.
The results show third-party registrations and applications of
CURVE and CURVY formative marks. The examining attorney, in the
final refusal dated August 1, 2001, made no mention whatsoever
of this evidence; more specifically, the examining attorney did
not mention applicant’s failure to accompany the search results
with copies of the listed registrations or applications. See In
re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010); and In re Jump
Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006) (to make a
third-party registration of record, a copy of the registration
should be submitted; mere listings of registrations are not
sufficient to make the registrations of record). However, in
the brief (unnumbered p. 6), the examining attorney raises for
the first time an objection to this evidence because copies of
the official records were not submitted.
If an applicant includes a listing of registrations in a
response to an Office action, and the examining attorney does
not advise the applicant that the listing is insufficient to
make the registrations of record at a point when the applicant
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4

can correct the error, the examining attorney will be deemed to
have waived any objection to consideration of the list itself,
for whatever probative value it may have. In re City of
Houston, 101 USPQ2d 1534, 1536 (TTAB 2012) (“[T]he examining
attorney’s failure to advise applicant of the insufficiency of
the list of registrations when it was proffered during
examination constituted a waiver of any objection to
consideration of that list. Accordingly, we will consider the
...list of registrations...‘for whatever limited probative value
such evidence may have.’” (citation omitted)). See TBMP
§ 1208.02 (3d ed. 2011).
Accordingly, the examining attorney’s objection is
overruled. The TESS printouts have been considered in reaching
our decision.
Insofar as likelihood of confusion is concerned, applicant
argues that the cited mark is extremely weak “as it is
descriptive of clothes designed for larger busts.” (Brief, p.
2). In this regard, applicant asserts that the term “curvy” is
ubiquitous in the marketplace and, therefore, consumers are
conditioned to look to other elements as a means of
distinguishing the source of the goods in the clothing field.
Applicant points to third-party registrations of similar marks
and the fact that the cited mark is registered on the
Supplemental Register. Applicant also contends that each of its
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marks is different from the cited mark in terms of sound,
appearance and commercial impression. In support of its
arguments, applicant submitted dictionary evidence, third-party
advertisements and, as noted earlier, printouts of search
results listing third-party registrations and applications of
CURVE and CURVY formative marks.
As to mere descriptiveness, although applicant asserts, as
just noted above, that the cited mark CURVY is merely
descriptive for clothing, applicant argues that its marks
CURVEE, CURVEY and CURVEEY are unique and are not the phonetic
equivalent of a merely descriptive term because they may be
pronounced differently. Applicant points to the misspellings in
its marks, and the absence of these misspelled terms as listings
in dictionaries. Applicant also states that its goods are not
meant for “curvy” figures.
The examining attorney maintains that, with respect to
likelihood of confusion, the marks are similar, and even weak
marks, such as those registered on the Supplemental Register,
are entitled to protection. The examining attorney also asserts
that the goods are closely related. In support of this refusal
the examining attorney submitted excerpts of third-party
websites.
As to the refusal based on mere descriptiveness, the
examining attorney contends that the proposed mark describes a
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significant feature of applicant’s clothing, namely, that the
clothing has a rounded or “curvy” shape or that the clothing is
designed for consumers with a rounded or “curvy” shape. In
support of the refusal under Section 2(e)(1) the examining
attorney introduced a dictionary definition, excerpts of third-
party websites, and third-party registrations issued on the
Supplemental Register.

Mere Descriptiveness
A mark is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods
or services. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828 (Fed. Cir. 2007); and In re Abcor Development, 588
F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not
immediately convey an idea of each and every specific feature of
the applicant’s goods or services in order to be considered
merely descriptive; rather, it is sufficient that the mark
describes one significant attribute, function or property of the
goods or services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a mark is merely descriptive is determined not in the
abstract, but in relation to the goods or services for which
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registration is sought, the context in which it is being used on
or in connection with the goods or services, and the possible
significance that the mark would have to the average purchaser
of the goods or services because of the manner of its use. In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is
settled that “[t]he question is not whether someone presented
with only the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the goods
or services are will understand the mark to convey information
about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17
(TTAB 2002).
The term “curvy” is defined as, in pertinent part, “with a
rounded shape.” (www.encarta.com). Also of record is
applicant’s dictionary evidence showing the absence of entries
of the misspelled terms sought to be registered.
The record further includes evidence of third-party uses of
“curvy” in the clothing field: “women’s curvy fit jeans
(Proportioned for curves)”; “curvy jeans”; “curvy boot cut
[jeans]”; “Curvy Cowgirl Couture – Dress Your Curves In More
Than Just Denim”; “curvy sweater”; and “Fashion for a Curvy
Figure.” And, of course, the cited registered mark CURVY
resides on the Supplemental Register.
As noted above, the question of mere descriptiveness must
be decided on the basis of the identification of goods in the
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applications. In the present case, the identifications all read
“clothing, namely, pants, denims, capri pants, cargo pants,
shorts, skirts, skorts, [and] active wear, namely, jogging
outfits.” Thus, the broadly worded identification encompasses
all kinds of these clothing items, including clothing that may
be described as “curvy” or clothing that is directed to “curvy”
individuals.
Based on the evidence of record, we find that the proposed
marks are merely descriptive of a significant characteristic or
feature of applicant’s clothing. No imagination is required by
a purchaser or user to discern that the marks, when applied to
the goods, describe “curvy” clothing or clothing directed to
“curvy” individuals. A slight misspelling of a merely
descriptive word, such as “curvy,” does not turn the descriptive
word into a non-descriptive mark. See, e.g., In re Ginc UK
Ltd., 90 USPQ2d 1472, 1475 (TTAB 2007) (the generic meaning of
“togs” is not overcome by the misspelling of the term as
“toggs”); and In re State Chem. Mfg. Co., 225 USPQ 687 (TTAB
1985) (FOM, as the phonetic spelling of “foam,” is merely
descriptive of foam rug shampoo). Thus, applicant’s proposed
marks CURVEE, CURVEY and CURVEEY are not magically transformed
into inherently distinctive marks by the mere slight
misspellings of the commonly used and understood descriptive
term “curvy.” An ordinary consumer encountering applicant’s
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marks in connection with applicant’s clothing would immediately
perceive the misspelled terms as the phonetic equivalents of the
merely descriptive term “curvy.” Moreover, the fact that none
of applicant’s proposed marks is found in a dictionary is not
controlling. See In re Orleans, Ltd., 196 USPQ 516 (TTAB 1977)
(BREADSPRED held merely descriptive of jellies and jams).
We have considered the examining attorney’s evidence of
third-party registrations issued on the Supplemental Register of
“CURVY” formative marks as showing that the Office has
consistently treated this term as merely descriptive for
clothing. Although this evidence is entitled to some probative
value, it is not conclusive on the issue of mere
descriptiveness. Each case must stand on its own merits. In re
International Taste Inc., 53 USPQ2d 1604, 1606 (TTAB 2000); and
In re Scholastic Testing Service, Inc., 196 USPQ 517, 519 (TTAB
1977). See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001).
We conclude that applicant’s marks, when applied to
applicant’s goods, are merely descriptive thereof under Section
2(e)(1).

Likelihood of Confusion
Our determination of the issue of likelihood of confusion
is based on an analysis of all of the probative facts in
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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). In any likelihood of confusion analysis, however, two
key 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).
We first turn to consider the similarity between the goods.
We make our comparison of the goods, including between the
respective channels of trade and classes of purchasers, based on
the goods as they are identified in the applications and the
cited registration. In re Giovanni Food Co., 97 USPQ2d 1990,
1991 (TTAB 2011). Applicant’s argument regarding registrant’s
specific goods and function, that is, that registrant’s clothing
is directed to women with “larger busts” must fail because, as
noted earlier, an applicant may not restrict the scope of goods
in an otherwise unrestricted registration by extrinsic evidence
(in this case, registrant’s website). See In re Bercut-
Vandervoort & Co., 229 USPQ at 764. More significant is
applicant’s mistaken contention that there is no likelihood of
confusion because it has “limited its application[s] to apparel
bottoms and deleted all tops and jackets from its application.”
(Brief, p. 1). What applicant overlooks, however, is that its
identification of goods still includes “pants, denims, capri
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pants, cargo pants and skirts.” Applicant’s “pants” are legally
identical to registrant’s “trousers,” and applicant’s and
registrant’s identifications of goods both include “skirts.”
Thus, for purposes of our analysis, the goods are identical or
otherwise are closely related clothing items.
Because the goods described in the applications and the
cited registration are in-part identical, we must presume that
the channels of trade and classes of purchasers are the same.
See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of the
parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade.”); and
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be presumed
to travel in the same channels of trade, and be sold to the same
class of purchasers.”). Additionally, there is nothing in the
recital of goods in either the cited registration or the
applications that limits either registrant’s or applicant’s
channels of trade. Thus, applicant’s assertion that its
clothing are sold in brick and mortar retail stores whereas
registrant’s clothing is sold through mail order is irrelevant.
See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992)
Ser. Nos. 85141163, 85141193 and 85141214

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(because there are no limitations as to channels of trade or
classes of purchasers in either the application or the cited
registration, it is presumed that the registration and the
application move in all channels of trade normal for those
services, and that the services are available to all classes of
purchasers for the listed services). In other words, there is
nothing that prevents applicant’s “pants” and “skirts” from
being sold in the same trade channels (e.g., clothing stores,
clothing sections of department stores, and through mail order)
and to the same classes of consumers, including ordinary ones,
that purchase registrant’s “trousers” and “skirts.”
Lest there be any doubt about the similarities between the
goods and the trade channels therefor, the examining attorney’s
evidence shows that third parties such as Nike, REI, Eddie
Bauer, Athleta and Gap sell a diverse collection of clothing,
often under the same mark.
The identity or otherwise close relationship between the
goods, and the presumed identity in trade channels and
purchasers are factors that weigh heavily in favor of a finding
of a likelihood of confusion.
We next direct our attention to the du Pont factor of the
similarity/dissimilarity between the marks. Preliminarily, we
note that the more similar the goods at issue, the less similar
the marks need to be for the Board to find a likelihood of
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confusion. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). We must
compare the marks in their entireties as to appearance, sound,
connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1960 (Fed. Cir. 2005), quoting In re E. I.
du Pont de Nemours & Co., 177 USPQ at 567. The test, under the
first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as to the
source of the goods offered under the respective marks is likely
to result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975).
There is no question that each of applicant’s marks,
CURVEE, CURVEY and CURVEEY, is similar to registrant’s mark
CURVY in appearance. The “-Y,” in registrant’s mark is simply
replaced by “-EE,” “-EY” or “-EEY” in applicant’s marks.
Further, as discussed earlier, the marks have the same meaning.
In addition, the marks are phonetic equivalents and, thus, sound
the same. Applicant’s argument that its marks may be pronounced
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in a variety of different manners is, to say the least,
strained; in any event, as often stated, there is no correct
pronunciation of a mark. See In re Lamson Oil Co., 6 USPQ2d
1041, 1042 n.3 (TTAB 1987). Given that the marks are so
similar, they engender substantially similar, if not virtually
identical overall commercial impressions. In sum, the mere
differences in spelling are hardly a sufficient means for
ordinary consumers to distinguish between each of applicant’s
marks and registrant’s mark.
As should be evident from our discussion of mere
descriptiveness above, we appreciate applicant’s principal
argument grounded on the weakness of registrant’s mark, and the
proposition that the mark is entitled to a narrow scope of
protection, especially given that the cited mark is registered
on the Supplemental Register. In support of this argument,
applicant relied upon third-party registrations and
advertisements.
With respect to the list of third-party registrations, a
mere listing, with little specific information regarding the
registered marks, is entitled to minimal probative value. See
In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514
(TTAB 2001). In any event, “[t]he existence of [third-party]
registrations is not evidence of what happens in the market
place or that consumers are familiar with them nor should the
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existence on the register of confusingly similar marks aid an
applicant to register another likely to cause confusion, mistake
or to deceive.” AMF Inc. v. American Leisure Products, Inc.,
474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); and In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). In
addition, applications are evidence of only that they were
filed.
Insofar as the evidence of actual use in advertisements is
concerned, there is an infirmity in applicant’s evidence, namely
the absence of any information regarding the extent of use of
CURVY-type marks by third parties. That is to say, there is no
way to gauge what effect, if any, these uses may have had in the
minds of consumers. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1693-94 (third-
party use was not “so widespread as to ‘condition’ the consuming
public”); Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333,
57 USPQ2d 1557, 1561 (Fed. Cir. 2001); Jansen Enterprises Inc.
v. Rind, 85 USPQ2d 1104, 1110 (TTAB 2007); and Fort James
Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624,
1629 (TTAB 2007). Thus, in the absence of evidence to
corroborate the extent of the third-party uses, this evidence is
entitled to only minimal probative value.
We acknowledge, of course, that the cited mark resides on
the Supplemental Register, and that the information of record
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shows that “curvy” is descriptive in the clothing field. As the
Board has noted in the past:
Registration on the Supplemental Register
may be considered to establish prima facie
that, at least at the time of registration,
the registered mark possessed a merely
descriptive significance. This is
significant because it is well established
that the scope of protection afforded a
merely descriptive or even a highly
suggestive term is less than that accorded
an arbitrary or coined mark. That is, terms
falling within the former category have been
generally categorized as “weak” marks, and
the scope of protection extended to these
marks has been limited to the substantially
identical notation and/or to the subsequent
use and registration thereof for
substantially similar goods.

In re Hunke & Jochheim, 185 USPQ 188, 189 (TTAB 1975) (citation
omitted). As alluded to the Board above, and confirmed by our
primary reviewing court, even a weak mark is entitled to
protection against the registration of a similar mark for
closely related goods or services. See King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA
1974). Indeed, even marks that are registered on the
Supplemental Register may be cited under Section 2(d). In re
Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978). We are
not persuaded by applicant’s arguments, however, for the precise
reason spelled out in the cited cases, namely, that even the
admittedly narrow scope of protection accorded to the cited mark
CURVY extends to protect against the substantially similar marks
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CURVEE, CURVEY and CURVEEY for identical or closely related
goods.
In reaching our decision, we have kept in mind that there
is no per se rule governing likelihood of confusion cases
involving all types of wearing apparel. See In re British
Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). However, in numerous
cases in the past, many different types of apparel have been
found to be related products which are sold in the same trade
channels to the same classes of purchasers, including to
ordinary consumers, and that confusion is likely to result if
the goods were to be sold under similar marks.4 To state the
obvious, we have decided this appeal based on the specific
evidence before us, and not on any rule.
We conclude that consumers familiar with registrant’s
“clothing, namely, shirts, fitted tops, jackets, trousers,
skirts, chemises, pajamas, nightgowns, camisoles, short robes,
night shirts, long wraps, bath robes; swimwear and underwear”

4 See, e.g., Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d
623, 128 USPQ 549 (CCPA 1961) [women’s boots related to men’s and
boys’ underwear]; Jockey Int’l, Inc. v. Mallory & Church Corp., 25
USPQ2d 1233 (TTAB 1992) [underwear related to neckties]; In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991) [women’s pants, blouses,
shorts and jackets related to women’s shoes]; In re Pix of America,
Inc. 225 USPQ 691 (TTAB 1985) [women’s shoes related to outer shirts];
In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) [hosiery related
to trousers]; In re Cook United, Inc., 185 USPQ 444 (TTAB 1975) [men’s
suits, coats, and trousers related to women’s pantyhose and hosiery];
and Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB
1964) [brassieres and girdles related to slacks for men and young
men].

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sold under the mark CURVY would be likely to mistakenly believe,
upon encountering any of applicant’s marks CURVEE, CURVEY and
CURVEEY for “clothing, namely, pants, denims, capri pants, cargo
pants, shorts, skirts, skorts, [and] active wear, namely,
jogging outfits,” that the goods originated from or are
associated with or sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusals to register under Section 2(d) are
affirmed; and the refusals to register under Section 2(e)(1) are
affirmed.