CCC Acquisition Corp.

Trademark Trial and Appeal Board

Jun 18, 2002

No. 75813280 (T.T.A.B. Jun. 18, 2002)

Mailed: June 18, 2002
Paper No. 16
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re CCC Acquisition Corporation
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Serial No. 75/813,280
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Simon Bock of Katten Muchin Zavis Rosenman (formerly
Rosenman & Colin LLP) for CCC Acquisition Corporation.
Scott M. Oslick, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Hairston and Drost, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
CCC Acquisition Corporation has appealed from the
final refusal of the Trademark Examining Attorney to
register OCEAN GEAR, with the word GEAR disclaimed, as a
trademark for “pants, shirts, shorts and swimtrunks.”1
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/813,280
2
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d) on that ground that
applicant’s mark so resembles the following three marks,
registrations of which are owned by the same entity for the
indicated goods, that, if used on applicant’s identified
goods, it is likely to cause confusion or mistake or to
deceive.
OCEAN for “men’s swimming trunks;
bathing suits for women and juniors;
bathing caps and pool caps for women,
men and juniors; men’s and ladies’
terry cloth robes; and warm up suits
and sweat suits.”2
for “clothing, namely bathing suits,
bathing trunks, tee shirts, tank tops,
shorts, robes, swimming caps and
wristbands”3
1 Application Serial No. 75/813,280, filed October 1, 1999,
based on an asserted bona fide intent to use the mark in
commerce.
2 Registration No. 985,060, issued May 28, 1974; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
3 Registration No. 1,620,039, issued October 30, 1990; section 8
affidavit accepted; Section 15 affidavit received. This
registration also includes goods in Class 28, but it is clear
that the Examining Attorney is not asserting likelihood of
confusion with the registration in this class.
Ser No. 75/813,280
3
for “clothing, namely, swimwear.”4
The appeal has been fully briefed,5 but an oral hearing
was not requested.
Before we discuss the substantive issue in this
appeal, we must note that the two cited registrations which
are stylized or contain a design element were due for
renewal on, respectively, October 30, 2000 and October 8,
1991. The Office records do not show that these
registrations have been renewed, but neither do they
indicate that the registrations have expired. Because it
is not clear whether these registrations have been renewed,
we will not refer to them in determining whether there is a
likelihood of confusion.
4 Registration No. 1,659,816, issued October 8, 1991; Section 8
affidavit accepted; Section 15 affidavit received.
5 In its brief applicant states that on November 20, 2000 a
response was submitted in error, and should be treated as
superfluous. The response, which was treated as a request for
reconsideration and acted on by the Examining Attorney on
December 22, 2000, forms part of the record in the application.
However, with its reply brief applicant has, for the first
time, submitted an Office action from a prior application. This
material is clearly untimely, see Trademark Rule 2.142(d), and
has not been considered. An additional exhibit, a printout from
the TrademarkScan database, had been submitted previously, and is
part of the record for whatever probative value it may have.
Ser No. 75/813,280
4
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in 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, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the goods, we note that they are
identical in part. The cited registration includes bathing
trunks and shorts, which are legally identical to the
swimtrunks and shorts identified in applicant’s
application, while applicant’s identified shirts would
encompass the tee shirts and tank tops listed in the
registration. Applicant’s goods are otherwise closely
related to the registrant’s identified goods.
In view of the identity of the goods, they must be
deemed to be sold in the same channels of trade to the same
classes of customers, which in this case would include
retail outlets such as mass market and department stores,
where the purchasers would be the general public.
Applicant does not dispute this, but concentrate the
arguments in its appeal brief on asserted differences in
Ser No. 75/813,280
5
the marks. Thus, we turn to a consideration of the marks,
keeping in mind that “when marks would appear on virtually
identical goods or services, 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 864, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
Applicant’s mark is OCEAN GEAR; the cited mark is
OCEAN. Applicant argues that the additional word GEAR in
its mark creates a mark which is different in appearance,
pronunciation and connotation from OCEAN. We disagree.
The word “gear,” as applied to applicant’s goods, is at
least descriptive, as evidenced by applicant’s disclaimer
of this term and the evidence of third-party registrations
for clothing items which bear disclaimers of this word.
Moreover, the Examining Attorney has submitted with his
brief a definition of “gear,” of which we take judicial
notice,6 as meaning “clothing, garments.”7
It is well-established that, in articulating reasons
for reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
6 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
7 Webster’s New Collegiate Dictionary, © 1973.
Ser No. 75/813,280
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rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the mark in their
entireties. In re In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). Because the word GEAR
is another word for clothing, consumers will view the word
OCEAN as the source-indicating portion of the mark.
Accordingly, it is entirely appropriate to treat this part
of the mark as the dominant element.
Further, the minor differences in appearance and
pronunciation of the marks resulting solely from the fact
that the word GEAR appears in the mark and will be
pronounced as part of the mark, do not serve to distinguish
the marks. The dominant word OCEAN in applicant’s mark
will clearly be seen and pronounced in the identical manner
as the word OCEAN is seen and pronounced in the cited mark.
Applicant also argues that the marks are different in
connotation and have differing commercial impressions,
asserting that applicant’s mark suggests “clothing or
equipment associated in some manner with the ocean,” while
the registered mark suggests “a large natural body of
water.” Brief, p. 2, emphasis in original. Because “gear”
means “clothing,” we do not accept applicant’s position
that OCEAN GEAR suggests equipment associated with the
Ser No. 75/813,280
7
ocean. Rather, the connotation of the mark is of clothing
used in or near the ocean, or simply OCEAN as a brand of
clothing. The registered mark, which is used for clothing
also, conveys the same connotation. The fact that the
generic term “clothing” (or “gear”) is not part of the
cited mark does not change the connotation; the goods
identified by the mark would be regarded as OCEAN clothing
or OCEAN gear.
Applicant has recognized that its mark consists of the
registered mark, to which the word GEAR has been added.
Applicant has cited several cases in which the addition of
a term to another’s mark has been found to avoid a
likelihood of confusion, while the Examining Attorney has
cited even more cases in which a likelihood of confusion
has been found when a party appropriates the mark of
another in its entirety, and adds subordinate matter to it.
The cases cited by applicant are distinguishable from the
present situation. The resulting mark in this case, OCEAN
GEAR, has the same connotation as the cited mark OCEAN, as
opposed to, for example, TIC TAC and TIC TAC TOE in In re
Ferrero, 479.F.2d 1395, 178 USPQ 167 (CCPA 1973) and PEAK
and PEAK PERIOD in Colgate-Palmolive Co. v. Carter-Wallace,
Inc., 432 F.2d 1400, 167 USPQ 529 (CCPA 1970).
Ser No. 75/813,280
8
With respect to other du Pont factors, there is no
evidence of third-party use or registration of OCEAN marks.8
The word OCEAN obviously has a suggestive meaning with
respect to swimtrunks and certain of the other goods listed
in the cited registration, but that is the same suggestive
meaning that applicant’s mark has. Although OCEAN would
not be considered a strong mark, and the registration thus
would not be entitled to a broad scope of protection, that
protection still extends to the use of the highly similar
mark OCEAN GEAR for the same and closely related goods.
Applicant’s other major argument is that the mark
OCEAN GEAR was used by a predecessor-in-interest “from at
least 1986 to 1992 and by the Applicant for an undetermined
time thereafter until abandoned.” Response filed March 8,
2001. Applicant claims that this shows that applicant’s
mark and the registered mark co-existed without confusion,
and also that the Examining Attorney who examined
applicant’s predecessor’s application did not find
likelihood of confusion with the cited registration. There
8 In its response to the first Office action applicant submitted
a list of OCEAN marks with their registration numbers. The
Examining Attorney advised applicant that such a listing was not
acceptable to make the registrations of record, and further
pointed out that without any indication of the goods involved,
the Examining Attorney could not make an assessment of the
relevance of the registrations. Applicant never submitted copies
of the registrations themselves, and therefore we have not
considered the list, which has no probative value.
Ser No. 75/813,280
9
is no evidence of record which shows why the prior
application for OCEAN GEAR was allowed to register, nor, as
the present Examining Attorney points out, is the decision
of an Examining Attorney with respect to another
application binding on the Examining Attorney in this case.
Whatever facts may have led an Examining Attorney to find
OCEAN GEAR registrable in 1992 are not necessarily relevant
ten years later. As for applicant’s assertion that the
marks were both in use for fourteen years, there is nothing
in the record to support this. Applicant’s own statement
is that the mark was used by applicant’s predecessor
between 1986 and 1992 “and for an undetermined time
thereafter until abandoned.” This does not show that
applicant or its predecessor used the mark for fourteen
years. Although concurrent use of marks without actual
confusion may be indicative that confusion is not likely to
arise, there must be evidence that there has been such use.
Here, applicant has not provided any details as to its use
or its predecessors use in terms of the number or
geographic scope of its sales that would indicate that
applicant’s and/or its predecessor’s and the registrant’s
goods were exposed to the same classes of consumers and
that there was an opportunity for confusion to occur if it
were likely to occur. Applicant acknowledges that there
Ser No. 75/813,280
10
was “temporary non-use of the mark”, reply brief, p. 2. As
far as we can tell from the record herein, that temporary
non-use may have begun shortly after applicant acquired the
mark in 1992, or there may have been an extended period of
minimal sales before the abandonment. In any event, we do
not find this factor of applicant’s claim of no evidence of
actual confusion9 to outweigh the other factors which
support a finding of likelihood of confusion.
Decision: The refusal based on Registration No.
985,060 is affirmed.10
9 Obviously we have not had an opportunity to hear from the
registrant as to its experience regarding confusion.
10 If the other two cited registrations, for OCEAN (stylized) and
OCEAN and design are renewed, we also affirm the refusals based
on those registrations. Both of those registrations include
swimming trunks, and applicant’s mark is confusingly similar to
those marks, too. That is, the stylization and the minor design
element in those marks is not sufficient to distinguish
applicant’s mark from them.