Casucci S.P.A.

Trademark Trial and Appeal Board

Feb 23, 2001

No. 75526520 (T.T.A.B. Feb. 23, 2001)

2/23/01
Paper No. 9
EWH/krd
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Casucci S.P.A.
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Serial No. 75/526,520
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Francie R. Gorowitz of Ladas & Parry for Casucci S.P.A.
Michael L. Engel, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
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Before Hanak, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Casucci S.P.A. (applicant) seeks to register the mark
shown below for various clothing articles including shirts,
skirts, shorts, t-shirts and jeans. The application was
filed on July 28, 1998 based upon applicant’s ownership of
Italian Registration No. 730,462 for the same mark and
goods. In its United States application, applicant
disclaimed the exclusive right to use the word “jeans”
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/526,520
2
apart from the mark as shown below.
Citing Section 2(d) of the Trademark Act, the
examining attorney refused registration on the basis that
applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the mark CASUCHI, previously
registered in typed drawing form for various clothing
articles including shirts, skirts, shorts, t-shirts and
jeans. Registration No. 1,967,553.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the examining
attorney filed briefs. Applicant did not request a
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the goods and the similarities of the mark. Federated
Ser No. 75/526,520
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Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Considering first the goods, they are, in part,
absolutely identical. Both the application and the cited
registration include shirts, skirts, shorts, t-shirts and
jeans. Of course, when the goods are legally identical,
they are advertised in the same media; travel in the same
trade channels; and are purchased by the same types of
consumers. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). These three additional factors of identical media,
trade channels and purchasers only “enhance the likelihood
of confusion.” Century 21 Real Estate, 23 USPQ2d at 1700.
In addition, the identical goods in question encompass
inexpensive products such as t-shirts which are purchased
by a diverse range of buyers (including children) who in
many instances exercise only minimal care. These factors
of inexpensive goods purchased by ordinary purchasers
exercising minimal care only further enhance the
probability of a likelihood of confusion. Kenner Parker
Ser No. 75/526,520
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Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22
USPQ2d 1453, 1458 (Fed. Cir. 1992).
Turning to a consideration of the marks, we note at
the outset that “when marks would appear on virtually
identical goods or services, the degree of similarity [of
the marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate, 23 USPQ2d at
1700. Of course, this is particularly true when the
identical goods include inexpensive goods purchased by
ordinary consumers exercising minimal care.
It is clear what the registered mark is, namely,
CASUCHI. However, it appears that applicant and the
examining attorney disagree as to how to describe in text
form applicant’s mark. Applicant characterizes its mark as
WORLD OF JEANS CASUCCI. The examining attorney describes
applicant’s mark as CASUCCI WORLD OF JEANS CASUCCI. While
it is impossible to depict with absolute precision
applicant’s mark in text form, we believe that the
examining attorney’s depiction is more correct in that it
reflects that the term CASUCCI appears twice (and not once)
in applicant’s mark.
In comparing the two marks, we begin with the
proposition that the marks must, of course, be compared in
their entireties. However, there is nothing improper when
Ser No. 75/526,520
5
analyzing two marks to give more weight to certain features
of a mark, provided that there are “rational reasons” for
doing so. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). It is clear that if “a
particular feature is descriptive or generic with respect
to the involved goods or services [then that] is one
commonly accepted rationale for giving less weight to a
portion of a mark.” National Data, 224 USPQ at 751.
In the case of applicant’s mark, the word JEANS has
been disclaimed since it is a generic term for one of the
clothing articles for which applicant seeks registration,
namely, jeans. Moreover, consumers seeing applicant’s mark
would, in our judgment, view the phrase WORLD OF JEANS as
indicating that applicant offers a large selection of
jeans. In this regard, the word “world” is defined as “a
large amount; great deal.” Webster’s New World Dictionary
(2d ed. 1970). Thus, while the term CASUCCI in applicant’s
mark is depicted in lettering somewhat less prominent than
the lettering used for the phrase WORLD OF JEANS,
nevertheless, we find that CASUCCI would be the primary
source indicator for applicant’s goods. At pages two and
three of its brief, applicant acknowledges that CASUCCI is
a surname. This surname is virtually identical to the
registered mark CASUCHI, which also appears to be a
Ser No. 75/526,520
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surname, probably of Italian origin. The only difference
in the two surnames, both of which consist of seven
letters, is that the second to last letter in the
registered mark is an H and the second to last letter in
the surname in applicant’s mark is a C.
In short, while in terms of visual appearance the two
marks have only limited similarities given the sheer size
of the phrase WORLD OF JEANS in applicant’s mark,
nevertheless, we find that the two marks have very similar
connotations. Both marks indicate that the identical items
of apparel emanate from a concern with the virtually
identical surname CASUCHI/CASUCCI. Moreover, in terms of
pronunciation, we find that the CASUCCI portion of
applicant’s mark would certainly be articulated, especially
given the fact that it appears not once but twice in
applicant’s mark. When so articulated, that portion of
applicant’s mark is virtually identical (if not identical)
to the registered mark CASUCHI. In short, while there are
differences in the marks, especially in terms of visual
appearance, we find they are similar enough such that their
use on identical, inexpensive goods purchased by ordinary
consumers exercising minimal care is likely to result in
confusion. Of course, to the extent that there are doubts
on the issue of likelihood of confusion, these doubts must
Ser No. 75/526,520
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be resolved against applicant as the newcomer. Kenner
Parker Toys, 22 USPQ2d at 1458.
Decision: The refusal to register is affirmed.