Britches of Georgetowne, Inc.v.Kinder Britches Inc.

Trademark Trial and Appeal Board

Jan 19, 1999

No. 91103150 (T.T.A.B. Jan. 19, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 19,99
Paper No. 17
DEB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Britches of Georgetowne, Inc.
v.
Kinder Britches Incorporated
_____
Opposition No. 103,150
to application Serial No. 74/657,452
filed on April 7, 1995
_____
Simor L. Moskowitz and Andrew J. Gray, IV, of Jacobson Price
Holman & Stern, PLLC, for Britches of Georgetowne, Inc.
Edward L. Tezak of Zackery Legal Group for Kinder Britches
Incorporated.
______
Before Hairston, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Britches of Georgetowne, Inc. (opposer) has opposed the
application of Kinder Britches Incorporated (applicant) to
register the mark "KINDER BRITCHES and design" as shown
Opposition No. 103,150
2
below for a "retail store for children’s apparel and
accessories."1
In the notice of opposition, opposer asserts that for
many years it has been engaged in the operation of retail
clothing stores, and the distribution, sale, marketing and
promotion of related clothing products under the marks
BRITCHES OF GEORGETOWNE, BRITCHES GREAT OUTDOORS and
BRITCHES. More particularly, opposer asserts that it has
used “BRITCHES” marks since at least as early as 1968 and
alleges ownership of four federal, incontestable
registrations of composite marks featuring BRITCHES.
Opposer asserts that it has extensively advertised and
promoted its products under these marks by way of catalogs,
store signage and displays, shopping bags, product packaging
and clothing labels.
Opposer alleges that applicant's mark so resembles
opposer's marks as to be likely to cause confusion, to cause

1 Serial No. 74/657,452 alleging use since August 12, 1993.
In September 1995, in response to the first Office action,
applicant disclaimed the words “KINDER BRITCHES” apart from the
mark as shown. Then in an Examiner’s Amendment in January 1996,
the requirement that the word “KINDER” be disclaimed was
withdrawn and applicant agreed to disclaim the word “BRITCHES”
alone.
Opposition No. 103,150
3
mistake or to deceive. Applicant, in its answer, has denied
the essential allegations of the notice of opposition.
Opposer has submitted a notice of reliance upon
applicant’s “Answers to Opposer’s First Set of
Interrogatories” and copies of opposer’s advertisements from
a variety of printed publications, and its four pleaded
registrations. Opposer, with its notice of reliance, also
introduced the status and title copies of opposer's four
pleaded registrations.
Opposer has also made of record a testimony deposition
with exhibits. Applicant has taken no testimony and has
submitted no other evidence. Both parties have submitted
briefs, but no oral hearing was requested.
Opposer relies upon the following registrations:
(1) “BRITCHES and design” in the form shown below for
a long list of clothing items and retail clothing store
services:
2

2 Reg. No. 1,268,646, issued on February 28, 1984 from an
application filed on June 5, 1981, which sets forth dates of
first use of October 1968; §8 affidavit accepted and §15
affidavit received.
Opposition No. 103,150
4
(2) “BRITCHES GREAT OUTDOORS and design” as shown
below for backpacks and a long listing of men’s and women’s
clothing:
3
(3) “BRITCHES OF GEORGETOWNE and design” as shown
below for clothing items and retail clothing store services:
4 and,
(4) “BRITCHES GREAT OUTDOORS and design” as shown
below for retail clothing store services:
5

3 Reg. No. 1,249,846 issued on August 30, 1983 from an
application filed on February 26, 1981, which sets forth a date
of first use in April 1976 and first use in commerce in June
1976; §8 affidavit accepted and §15 affidavit received.
4 Reg. No. 1,263,661 issued on June 10, 1984 from an
application filed on June 5, 1981, which sets forth dates of
Opposition No. 103,150
5
Opposer took the testimony of Ms. Linda Gay, Opposer’s
Vice President of Production and Sourcing (along with
exhibits). Opposer began use of the BRITCHES and BRITCHES
OF GEORGETOWNE marks in October 1968 and the BRITCHES GREAT
OUTDOORS marks in April 1976.
According to Ms. Gay, Opposer is a retail establishment
having three separate divisions (Deposition Testimony of Ms.
Linda Gay, p. 8). Although opposer’s predecessor in
interest, Canterbury Tales, Inc., began using the “Britches”
label in 1968,6 around 1978, Britches of Georgetowne,
opposer’s tailored clothing division, began manufacturing
its own products (Deposition Testimony of Ms. Linda Gay, p.
7). The advertisements stress that these fourteen “Britches
of Georgetowne” stores (Deposition Testimony of Ms. Linda
Gay, p. 9) represent a tradition of fine clothiers selling
luxurious suits and shirts of extraordinary quality for
professionals, businessmen, and the like (Deposition
Testimony of Ms. Linda Gay, p. 10; Deposition Exhibits 8c &
8d; Opposer’s Exhibits 10, 13, 15 & 17).
Opposer’s second and largest division, Britches Great
Outdoors, focuses on active sportswear and now has ninety-

first use of October 1968; §8 affidavit accepted and §15
affidavit received.
5 Reg. No. 1,222,967 issued on January 4, 1983 from an
application filed on February 26, 1981, which sets forth a date
of first use in April 1976 and first use in commerce in June
1976; §8 affidavit accepted and §15 affidavit received.
Opposition No. 103,150
6
three stores nationwide (Deposition Testimony of Ms. Linda
Gay, p. 9). The target audience for Britches Great Outdoors
comprises students and young adults ranging from teen-agers
to those “thirty-somethings” looking for casual, weekend or
outdoor clothing (Deposition Testimony of Ms. Linda Gay, pp.
11-14).
The third and newest division comprises nineteen
Britches Factory Stores (Deposition Testimony of Ms. Linda
Gay, p. 9). This division is a recent spin-off of Britches
Great Outdoors, and sells many of the same goods as Britches
Great Outdoors but to factory outlet customers at lower
price-points (Deposition Testimony of Ms. Linda Gay, pp. 14-
15). The shopping bags for the outlet stores have a large
letter “B” enclosed within a circle, and have the word
“BRITCHES” in block letters below the circle (Deposition
Exhibit 13d).
While opposer got its start in the Washington DC
metropolitan area, it now has outlets in twenty-seven states
and the District of Columbia (Deposition Testimony of Ms.
Linda Gay, p. 10). Within the past year or so, opposer has
opened stores in California and has plans for other
locations in the Pacific Northwest (Deposition Testimony of
Ms. Linda Gay, p. 10). At various times opposer has

6 “BRITCHES and design” (Reg. No. 1,268,646), and “BRITCHES
OF GEORGETOWNE and design” (Reg. No. 1,263,661) supra.
Opposition No. 103,150
7
marketed collections of children’s clothing,7 has engaged in
gift mail order services (Deposition Testimony of Ms. Linda
Gay, pp. 16,20), and conducted nationwide advertising to
mailing lists and in national publications like “Gentleman’s
Quarterly” (Deposition Testimony of Ms. Linda Gay, p. 37).
The sole issue for our resolution is likelihood of
confusion. Priority is not in issue with respect to the
marks and goods/services shown therein in view of opposer's
valid and subsisting registrations. See King Candy Co. v.
Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). Even without the pleaded registrations, opposer's
priority is clear from the testimony of Ms. Gay and the
exhibits of record.
In the course of rendering this decision, we have
followed the guidance of In re E.I. duPont deNemours & Co.,
476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973), which
sets forth the factors which, if relevant, should be
considered in determining likelihood of confusion.

7 See exchange with opposer’s counsel taken from Ms. Linda Gay’s
Deposition Testimony of September 3, 1997, at pp. 13-14:
Q: [opposer’s counsel] Has Britches ever sold any children’s’ or
kids’ clothes?
A. [Opposer’s vice president] We sold a collection a number of
years ago that was called JV. It was more geared towards boys.
It was from sizes 8, 10 and 12…
Q: When might that have been?
A: It was about six or seven years ago, 1991, ’92.
Q: Okay. Are there any current plans to resume children’s’
clothes?
Opposition No. 103,150
8
It is opposer’s position that applicant's mark "KINDER
BRITCHES and design" so closely resembles its BRITCHES marks
that confusion is likely.
Applicant, on the other hand, maintains that there is
no likelihood of confusion because the marks in their
entireties are quite different, and that the only common
term, “Britches,” is a weak mark in the clothing field.
As described by the parties, the services are quite
closely related. Both parties are in the retail clothing
business. Although applicant’s services are expressly
limited to children’s clothing, opposer’s services are not
at all limited. The issue of likelihood of confusion must
be determined on the basis of the services as identified in
the involved application and registrations. Accordingly,
opposer’s services must be interpreted as including retail
clothing store services for children. In re Elbaum, 211
USPQ 639 (TTAB 1981). It is common knowledge, based upon
everyday experience, that items of apparel for men, women
and children are often sold in the same stores.
Irrespective of age or gender, clothing items are
customarily sold at retail through traditional retail
outlets, in shopping malls, etc., similar to those operated
by opposer, as well as through mail order, departments

A: There are current conversations … in regards to
reintroducing kids’ clothes…
Opposition No. 103,150
9
stores and clothing specialty shops. Because apparel retail
stores serve as a channel of trade for men’s, women’s and
children’s clothing, the classes of actual and potential
purchasers for the goods sold through the providers of such
services would necessarily be identical.
Even in opposer’s stores selling only men’s clothing,
there would still be an overlap in the class of prospective
purchasers with applicant’s children’s clothing stores. For
example, women who are wives and mothers would shop for
clothing for members of their family in both locations.
Furthermore, in reality, the smaller sizes of adult clothing
found in a Britches Great Outdoors store are currently quite
popular with older children and adolescents (Deposition
Testimony of Ms. Linda Gay, p. 12-13). Also, Britches of
Georgetowne has occasionally had clothing collections in its
stores specifically geared to younger boys (Deposition
Testimony of Ms. Linda Gay, p. 13-14).
Based on the above, if a retail store specializing in
children’s apparel were to market such items of clothing
under the same or a substantially similar mark as that used
in connection with opposer’s goods and services, confusion
as to the source or sponsorship thereof would be likely to
occur.
In turning now to a closer examination of the parties’
respective marks, we agree with applicant that we must
Opposition No. 103,150
10
compare the composite marks in their entireties.
Furthermore, applicant argues that the “word ‘britches’ is
weak in that it is generic, descriptive or highly suggestive
of the goods/services” (Applicant’s brief, p. 2).
By virtue of its long and extensive use of an
admittedly highly suggestive (if not descriptive)
designation, opposer argues this term has acquired
distinctiveness as a source identifier and is relatively
well known nation-wide in the clothing field. This position
may well explain why in the two previous registrations owned
by Canterbury Tales, Inc. (Applicant’s brief, p. 2, exhibits
B & C)8, opposer’s predecessor disclaimed the term
“Britches” in 1971-1972. On the other hand, the four
pleaded registrations, which issued a dozen years later
under Section 2(f), reflect this acquired distinctiveness.
Although the record shows several marks in third-party
registrations incorporating the word “Britches,” the record
does not suggest to us that the mark is at all diluted in
this field -- and especially since there is no evidence of
actual third-party usage, or any third-party registrations
for clothing or retail services where the word “Britches”

8 “BRITCHES OF GEORGETOWNE and design,” Reg. No. 942,463,
issued September 5, 1972; and “BRITCHES OF GEORGETOWNE and
design,” Reg. No. 942,838, issued September 12, 1972.
Opposition No. 103,150
11
has a commercial impression similar to those in plaintiff’s
marks.9
Plaintiff places its mark on all of its goods and uses
the mark extensively in advertising and promotional
materials –- including nation-wide publications. In the
written ad copy made part of the record and on shopping
bags, the word “Britches” is frequently used alone to refer
to opposer’s services. Ms. Gay testified that increasingly
opposer’s executives discuss BRITCHES alone as an all-
encompassing mark for all of its related divisions. In all
four pleaded registrations, “BRITCHES” is the dominant
component of each mark. Opposer’s Registration No.
1,268,646 cover a long listing of clothing items and retail
clothing store services, and the subject mark comprises the
word “BRITCHES” alone within a rectangular border device.
Thus, after reviewing the record, we find that
“BRITCHES” is a strong mark, entitled to broad protection.
Plaintiff has used its mark most extensively in the sale and
promotion of its goods and services since 1968.
By contrast, applicant readily translates the word
“Kinder” as being equivalent to “Children.” Hence, to the

9 Examine, for example, the pun contained in the “SUNS OF
BRITCHES” mark. Marks such as this one evoke connotations that
by their very nature arguably tell consumers acquainted with
opposer’s goods and services that these are not the indicators
of an up-scale clothier who has successfully build goodwill
around the “BRITCHES” name for more than three decades.
Opposition No. 103,150
12
extent the ordinary consumer sees the service mark, “KINDER
BRITCHES,” she will think this is merely the latest, logical
expansion of the retail business of Britches of Georgetowne,
this time into separate retail outlets exclusively for the
children’s market.
As to the duPont factor on the conditions of sale, it
seems clear that purchasers of clothing items are ordinary
consumers, subject to the carelessness and misimpressions
that often accompany impulse purchases.
Opposer has more than a hundred retail outlets spread
across much of the United States. However, since it has
just reached the west coast and has not yet made inroads
into the Pacific Northwest –- an area of the country where
applicant has a most limited presence -- we would not expect
at the moment to find cases of actual confusion on the part
of consumers. However, based upon opposer’s growth over the
past thirty-plus years, opposer’s selling clothing
(including items of children’s clothing) in the Pacific
Northwest under its “BRITCHES” marks would seem to be within
its natural zone of expansion. At that future juncture, it
is inevitable there would be confusion between these parties
claimed marks on their respective goods/services.
Decision: Accordingly, the opposition is sustained and
the application for “KINDER BRITCHES and design” is refused.
Opposition No. 103,150
13
P. T. Hairston
H. R. Wendel
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board