BDSRCO, Inc.

Trademark Trial and Appeal BoardSep 21, 2007

No. 78731559 (T.T.A.B. Sep. 21, 2007)

Mailed: September 21, 2007 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re BDSRCO, Inc. ________ Serial No. 78731559 _______ Paul W. Kruse of Bass Berry & Sims PLLC for BDSRCO, Inc. Inga Ervin, Trademark Examining Attorney, Law Office 111 (Craig D. Taylor, Managing Attorney). _______ Before Seeherman, Zervas, and Bergsman, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: BDSRCO, Inc. (applicant) applied to register the mark JUST B GIRLS1 (in standard character form) on the Principal Register for the following goods, as amended: “clothing, namely, tee shirts, knit tops, woven tops, tank tops, swim wear, pants, shorts, skorts, capris, gauchos; sweatshirts, leggings, scarves, hats, gloves, slipper socks and socks” in International Class 25. 1 Serial No. 78731559, filed on October 12, 2005. Applicant claims first use anywhere and first use in commerce in May 2005. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Ser No. 78731559 2 The examining attorney has issued a final refusal of registration of the mark under Section 2(d) of the Trademark Act (15 U.S.C. § 1052(d)) because of a registration for the mark for “clothing, namely, T-shirts” in International Class 25. This registration, i.e., Registration No. 2149244, issued on April 7, 1998 (Section 8 affidavit accepted). After the examining attorney made the refusal final, applicant filed this appeal. In a case involving a refusal under Section 2(d), we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the evidence of record on these factors, we must keep in mind that “[t]he fundamental inquiry mandated Ser No. 78731559 3 by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We begin our discussion by considering applicant’s and registrant’s goods. In this case, the goods are, at least in part, identical. Both applicant and registrant’s goods include T-shirts. Most of applicant’s other clothing items, e.g., pants, shorts, skorts, capris and gauchos, are closely related to registrant’s T-shirts inasmuch as these clothing items could be used in association with registrant’s T-shirts. The fact that some of applicant’s goods are either identical or closely related to the registrant’s goods is sufficient to support a finding of likelihood of confusion. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the application). Furthermore, since the goods are in part identical, we must presume that the channels of trade and purchasers would be the same. In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally Ser No. 78731559 4 identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). See also 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”). Next, we look at the marks themselves to assess their similarities and dissimilarities. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting E. I. du Pont de Nemours & Co., 177 USPQ at 567 (“The first DuPont factor requires examination of ‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.’”). Of course, when we are considering the marks, we must consider them in their entireties rather than simply comparing their individual components. The test 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 or services offered under the respective marks is likely to result. The focus Ser No. 78731559 5 is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 (TTAB 2004). See also Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973). We also keep in mind that when marks would appear on virtually identical goods or services, as is the case here, the degree of similarity necessary to support a conclusion of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). First, we find that the dominant feature in registrant’s mark is the literal portion, i.e., the wording B GIRL. Because it is by the word portion that consumers will refer to or call for the goods, it is the wording B GIRL, not the design element, that will be recognized and used by purchasers as the primary means of source identification. Because the term B GIRL is the dominant feature created by registrant’s mark, that feature is accorded more weight in our comparison of the marks under the first du Pont factor. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004). Next, we note that although the wording in registrant’s mark is depicted in stylized lettering, this Ser No. 78731559 6 stylization is not sufficient to distinguish the marks because applicant’s mark has been applied for in standard character format. Therefore, if this mark were to be registered, applicant could use the mark in a similar font to that of the registered mark. In any event, the stylized format of the cited mark is rather ordinary and not particularly distinctive. As for the wording in the marks themselves, they both include the term GIRL, in the singular in the cited mark and in the plural in applicant’s mark, and the letter B. Because both marks use the term “B” and juxtapose the “B” next to GIRL or GIRLS, there are obvious similarities in the sound and appearance of the marks. The slight differences from the addition of the term JUST and the plural form of GIRL in applicant's mark do not suffice to distinguish the marks. With respect to the meaning and commercial impression of the marks, applicant maintains the “B” in its mark is “short” for the word “be.” Brief at unnumbered pp. 4 – 5. Applicant argues that “JUST B GIRLS exhorts consumers of Applicant's’ clothing to simply be their authentic selves. … The overall commercial impression and meaning perceived by consumers is ‘just be girls’ and be proud of it.” Id. Further, applicant argues that in contrast, “B GIRL refers Ser No. 78731559 7 to a female break dancer. JUST B GIRLS suggests nothing about break dancing or hip hop culture.” Brief at unnumbered p. 5. As support for its argument, applicant cites to an entry for “B-girls” (“a female who practices this [break dancing] style”) from the Wikipedia website, which it submitted with its response to the first Office action. We have several problems with applicant's argument. First, the evidence applicant relies on does not indicate whether the “break dancing girl” meaning of B GIRL is known outside of hip hop culture, and aside from the single Wikipedia reference, there is no evidence which would allow us to determine the extent of its recognition or use. Second, if the hip hop meaning of B GIRL is commonly known, it is plausible that JUST B GIRLS will be viewed as meaning “just break dancing girls.” Third, there is no indication that registrant – identified as B-Girl Aromatherapy, Inc. – is connected with hip hop culture and, more importantly, the identification in the registration is for T-shirts per se, without any limitation as to the purchasers of the products. We therefore must assume that the registration encompasses T-shirts sold to consumers who are not knowledgeable about hip hop culture and hence would not know the hip hop meaning asserted by applicant. Ser No. 78731559 8 We find that the meaning and commercial impression of the marks are similar. Even if we assume that the “break dancing girl” meaning of B GIRL is commonly known, that meaning would also apply to applicant’s mark. As a result, the meaning of the marks is similar in that applicant’s mark would have the meaning of “just break dancing girls.” If the hip hop meaning is not commonly known, the “B” in registrant’s mark would have the same meaning of “be” as it does in applicant’s mark, and both marks would convey the same meaning and commercial impression, exhorting girls to “be” or “just be.” Due to the similar terms in the marks and the resulting similar commercial impressions, as well as the similar meanings that may be attributed to the marks, we find that when the marks are considered as a whole, they are similar in sound, meaning, appearance and commercial impression. To the extent that there are any differences in the marks, such differences are outweighed by the similarities due to the shared terms B GIRL, or B GIRLS. We therefore resolve the du Pont factor regarding the similarity of the marks against applicant. Applicant has also pointed out that the marks have been in concurrent use for a period of two years and that there is no evidence of actual confusion between Ser No. 78731559 9 applicant's and registrant’s marks. Brief at unnumbered p. 6. As the Federal Circuit stated in In re Majestic Distilling Co., supra, 65 USPQ2d at 1205, the lack of evidence of actual confusion carries little weight, especially in an ex parte context. Accordingly, we consider the du Pont factor regarding actual confusion as being neutral. Thus, upon consideration of the relevant du Pont factors, as well as the evidence of record and the arguments of the examining attorney and applicant, we conclude that when purchasers who are familiar with registrant’s mark encounter applicant’s mark on identical and closely related goods, they are likely to be confused. Decision: The examining attorney’s refusal under Section 2(d) of the Trademark Act to register applicant’s mark is affirmed.