Armouth Int’l. Inc.

Trademark Trial and Appeal Board

Aug 6, 1999

No. 74717647 (T.T.A.B. Aug. 6, 1999)

Paper No.10
RLS/bg
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 6, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Armouth International Inc.
________
Serial No. 74/717,647
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Aaron Feinberg for Armouth International Inc.
Andrew Roppel, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney)
_______
Before Simms, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Armouth International Inc. (applicant), a New York
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark shown
below
Ser No. 74/717,647
2
for clothing: namely, men’s underwear.1 The Examining
Attorney has refused registration on the basis of two
registrations held by the same entity. The first
registration is Registration No. 351,978, issued November
16, 1937 (third renewal, for ten years from November 16,
1997) for the mark shown below
for wearing apparel for men, women and children—namely,
hats, coats, raincoats, suits, dresses, leather and fabric
gloves, leather slippers, scarves, mufflers, neckties and
sweaters. The second registration is Registration Number
1,936,532, issued November 21, 1995, for the mark VAGABOND
for clothing, namely, suits, dresses, jackets, skirts,
overcoats, trousers, shorts, sweaters, cardigans, overalls,
shirts, scarves, gloves and jeanswear, namely, pants,
shirts and jackets made of denim; footwear; and headwear.
It is the Examining Attorney’s position that applicant’s
mark so resembles these registered marks as to be likely to

1 Application Serial Number 74/717,647, filed August 16, 1995,
based upon applicant’s allegation of use in commerce since at
least as early as July 15, 1995. In the original application,
applicant sought registration for the mark WORLD VAGABOND without
any design element, for men’s pants and jeans as well as men’s
Ser No. 74/717,647
3
cause confusion. Applicant and the Examining Attorney have
submitted briefs but no oral hearing was requested.
We affirm.
The Examining Attorney argues that the literal portion
of applicant’s mark is dominant and more significant
because it will be used by consumers to call for
applicant’s goods. In addition, the Examining Attorney
argues that the VAGABOND portion of applicant’s mark is
more significant because the term “WORLD” modifies this
word and because, from a computer printout of the number of
occurrences that the word “WORLD” appears in registrations,
this term is not a strong source indicator. It is the
position of the Examining Attorney that this part of
applicant’s mark suggests an international aspect to
applicant’s goods and that the addition of the term “WORLD”
(and the design of the globe) is not sufficient to avoid
likelihood of confusion.
With respect to the goods, the Examining Attorney
points out that there is no limitation in either the
application or the cited registrations on the channels of
trade. Accordingly, the Examining Attorney presumes that
the goods are sold in all of the normal channels of trade

underwear. Applicant subsequently amended the drawing of the
mark to include the design of the globe.
Ser No. 74/717,647
4
for the listed goods and are available to all potential
purchasers. The Examining Attorney indicates that such
channels of trade include retail clothing stores and
department stores. The Examining Attorney has also made of
record computer printouts of third-party registrations
showing the same mark registered to the same entity for
both underwear and outerwear products such as those listed
in the cited registrations. It is also the Examining
Attorney’s position that the registered mark is famous
because the older of the cited registrations indicates that
the registered mark was first used in 1912, more than
eighty years ago. According to the Examining Attorney, the
length of use of this mark is sufficient to consider this
mark famous.2
Applicant, on the other hand, argues that the
Examining Attorney has improperly dissected applicant’s
mark. Applicant argues that the term VAGABOND in its mark
is not more dominant than the word WORLD. Rather,
applicant argues that its mark is unitary, as well as being

2 On this point, we disagree. The mere fact that a mark has been
in use for a considerable period of time is not sufficient, in
and of itself, to demonstrate fame. That is because, even
assuming no interruption in use over the years, we cannot presume
that the use of any registered mark has been of such a nature and
extent that it is now well known or famous among the relevant
purchasers. It is possible, for example, that the mark’s use has
been limited both in the level of sales and extent of advertising
as well as the geographic extent of use.
Ser No. 74/717,647
5
of distinct appearance. With respect to the goods,
applicant’s attorney argued in its first response to the
Examining Attorney’s refusal that entities that sell suits,
trousers, hats or dresses do not also sell underwear, and
vice versa. Without support, applicant argues that there
exist numerous entities that sell outerwear or underwear
only and not both. Applicant also notes that the
registrant has filed Section 8 and 9 affidavits and that
registrant “did not request any broadening of the
identification of the goods to include underwear.” Brief,
8.3
Upon careful consideration of this record and the
arguments, we agree with the Examining Attorney that
confusion is likely. It is our opinion that purchasers and
potential purchasers, aware of registrant’s VAGABOND and
VAGABOND (stylized) marks in connection with a wide variety
of items of clothing, who then encounter applicant’s WORLD
VAGABOND and design mark in connection with underwear, are
likely to mistakenly believe that these goods come from the
same source or are sponsored or endorsed by the same
entity. In this regard, we note that the registered mark
VAGABOND appears to be an arbitrary mark with respect to

3 Applicant is advised that, once a mark has been registered, the
listed goods (or services) may not be enlarged by the registrant.
Ser No. 74/717,647
6
items of clothing. Also, even if consumers realize that
applicant’s mark is slightly different from the registered
marks, applicant’s mark suggests an international aspect,
and would not necessarily be seen as identifying a
different source. That is to say, applicant’s mark may
well be seen as merely a variation of the registered marks.
We must also realize that the average purchaser of clothing
may retain only a general impression of a mark, and that
one feature may be regarded as more significant in
indicating origin. See In re National Data Corp., 754 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The third-party
registrations introduced by the Examining Attorney also
suggest that consumers may be aware that such goods as
dresses, jackets, trousers, scarves and gloves as well as
underwear come from the same entity. See In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The
cases cited on page 6 of the Examining Attorney’s brief are
illustrations of cases where the Board has held confusion
to exist in cases involving goods similar to those involved
in this appeal. The Examining Attorney, on page 7 of his
brief, has also distinguished cases cited by applicant
involving a common element which is either descriptive or
highly suggestive of the goods.
Ser No. 74/717,647
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Decision: The refusal of registration is affirmed.
R. L. Simms
E. J. Seeherman
C. E. Walters
Administrative
Trademark Judges,
Trademark Trial and
Appeal Board