Diane Von Furstenberg Studio

Trademark Trial and Appeal Board

Mar 18, 1998

No. 74570013 (T.T.A.B. Mar. 18, 1998)

Paper No. 15
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 18, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Diane Von Furstenberg Studio
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Serial No. 74/570,013
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Howard Aronson of Lackenbach Siegel Marzullo Aronson &
Greenspan, P.C. for Diane Von Furstenberg Studio.
Jeffrey Look, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Sams, Simms and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Diane Von Furstenberg Studio has filed an application
to register the mark CASUAL CHIC for handbags, knapsacks,
tote bags, belt bags in the nature of waist packs, suitcases
and luggage in class 18; and men’s and women’s wearing
apparel, namely, coats, jackets, vests, shawls, sweaters,
hats, tops, shirts, skirts, pants, belts, shoes and boots in
class 25. 1

1 Application Serial No. 74/570,013 filed September 6, 1994;
alleging dates of first use and first use in commerce of August
Ser No. 74/570,013
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark, when applied to the goods in class
25, so resembles each of the following marks, which are
owned by the same entity for the indicated goods, as to be
likely to cause confusion:
(a)“CHIC” (typed letters) which is registered for
women’s clothing, namely, tops comprised of blouses,
woven and knitted sleeved and sleeveless shirts,
sweatshirts and jackets; 2

(b)“CHIC” BY H.I.S” which is registered in the
stylized form reproduced below

for ladies’ panties, crop tops, tank tops and
coordinated teddys; 3 women’s foundation garments,
brassieres, girdles, women’s undergarments
consisting of a brassiere and a panty
constructed together as one piece and control
panties that specifically coordinate with the
foregoing; and coordinated teddys; 4

(c)”CHIC” which is registered in the stylized
form reproduced below

26, 1994. The word “CASUAL” has been disclaimed apart from the
mark as shown.
2 Registration No. 1,349,508 issued July 16, 1985; Sections 8 &
15 affidavit filed.
3 Registration No. 1,663,798 issued November 5, 1991.
4 Registration No. 1,769,351 issued May 4, 1993.
Ser No. 74/570,013
3

for ladies’ and girls knit hosiery, knit
headbands, leg warmers and wristbands 5;
women’s foundation garments, brassieres,
girdles, women’s undergarments consisting
of a brassiere and a panty constructed
together as one piece and control panties,
women’s daywear; namely, full slips, half
slips, camisoles and panties that
specifically coordinate with the foregoing;
and coordinated teddys 6; ladies’, girls’,
infants’ and toddlers’ sheer hosiery and
knee highs, including opaque tights up to
70 denier 7; athletic shoes 8; ladies’ panties,
crop tops, tank tops and coordinated teddys 9;
sets and coordinates consisting of tops and
and girls’ knit and woven separate tops,
bottoms and dresses, shortalls and overalls; 10
and

(d) “CHIC SPORTSWEAR FOR THE NATURAL WOMAN”
(typed letters) which is registered for
women’s clothing; namely, jeans; woven pants;
knit pants; woven tops; knit tops; sweaters;
activewear; namely, sweat shirts, sweat
jackets and sweat pants; blazers; T-shirts;
and hosiery; namely, socks and tights. 11

We note that the Examining Attorney also finally
refused registration of the class 18 goods in view of

5 Registration No. 1,759,193 issued March 16, 1993.
6 Registration No. 1,750,797 issued February 2, 1993.
7 Registration No. 1,760,707 issued March 23, 1993.
8 Registration No. 1,784,869 issued July 27, 1993.
9 Registration No. 1,802,754 issued November 2, 1993.
10 Registration No. 1,870,618 issued December 27, 1994.
Ser No. 74/570,013
4
Registration Nos. 1,614,781 and 1,614,782, owned by the same
entity. However, since such registrations have been
canceled under Section 8, the refusal to register on this
basis will be not be given further consideration.
Applicant has appealed. Briefs have been filed, but no
oral hearing was requested.
At the outset, we note that applicant concedes that the
parties’ goods are identical or otherwise closely related.
(Brief, p. 3) Thus, we turn our attention, as have
applicant and the Examining Attorney, to a consideration of
the marks. 12
Applicant maintains that when the marks are considered
in their entireties, they create different commercial
impressions. Applicant argues that the word “CASUAL” in its
mark cannot be ignored. In particular, applicant states:
Applicant’s CASUAL CHIC mark, for use in
connection with clothing and other fashion
items, is distinctive and unique. Essentially,
it is a clever oxymoron, designed to
simultaneously convey a contradicting and
conflicting message. CASUAL implies
informality, a relaxed mood, happenstance.

11 Registration No. 1,833,369 issued April 26, 1994.
12 During the prosecution of this case, the Examining Attorney
argued not only a likelihood of confusion vis-a-vis applicant’s
mark CASUAL CHIC and each of the registered marks, but that
registrant owned a family of CHIC marks and that applicant’s mark
CASUAL CHIC was likely to cause confusion with registrant’s
family of CHIC marks. However, the Examining Attorney expressly
withdrew the likelihood of confusion argument with respect to a
family of CHIC marks in his appeal brief, and thus we have given
no consideration to applicant’s argument in response thereto in
its brief.
Ser No. 74/570,013
5
CHIC, on the other hand, conveys style,
elegance, attention to detail, and
sophistication. A person would not ordinarily
think to dress CASUALLY if she wanted to
be perceived as CHIC. This special meaning,
this juxtaposition of conflicting moods is
the essence of Applicant’s mark.
The distinct message conveyed by Applicant’s
mark is new, fresh, and unique. H.I.S.
Licensing’s marks simply do not embody
or even remotely convey this message.
(Brief, p. 6)
While we have carefully considered applicant’s
argument, we are not persuaded that CASUAL CHIC and CHIC
engender such different commercial impressions as to
preclude likelihood of confusion. Rather, due to the shared
presence of the word CHIC, applicant’s mark CASUAL CHIC and
registrant’s CHIC marks, all connote a similar theme of
stylishness. 13 We disagree with applicant’s contention that
CASUAL CHIC conveys a “contradicting and conflicting
message.” Clothing which is designed for informal
occasions may nevertheless be stylish. In this case, we
believe that purchasers familiar with registrant’s CHIC
marks would be likely to assume, upon encountering clothing
bearing the mark CASUAL CHIC, that the mark is simply a

13 We judicially notice the following definition of “chic” taken
from Webster’s New World College Dictionary, 3d. (1997): smart
elegance of style and manner; said esp. of women and their
clothes—- adj. stylish in a smart, pleasing way. In the same
dictionary, “casual” is defined, in relevant part, as: shoes,
clothes, etc. designed for informal occasions.
Ser No. 74/570,013
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variation of registrant’s CHIC marks used to designate a
particular line of clothing made by registrant. See Henry
Siegel Co. v. M & R International Mfg. Co. 4 USPQ2d 1154
(TTAB 1987) [Purchasers familiar with petitioner’s CHIC mark
are likely to assume, upon encountering women’s clothing
bearing the mark L.A. CHIC, that such mark is simply a
variation of CHIC mark used to designate a line of clothing
made by petitioner in Los Angeles or style prevalent there.]
Further, the wording “by H.I.S.” and SPORTSWEAR FOR THE
NATURAL WOMAN which appear in two of registrant’s marks does
not significantly change the overall commercial impression
projected by these marks, which are dominated by the
presence therein of CHIC.
Finally, applicant argues that the word “chic” is
highly suggestive or otherwise weak as an element of marks
for clothing and fashion items, and thus registrant’s CHIC
marks are entitled to only a limited scope of protection.
In support of its position, applicant submitted a list of
registrations it obtained from a commercial database of
registration information. The list contains information
concerning a number of registrations for marks which consist
of or include the word “chic” or its phonetic equivalent for
clothing.
As the Examining Attorney points out, however, simply
submitting a list of registrations does not make the
Ser No. 74/570,013
7
registrations of record. Only submission of copies of such
registrations would have made them of record. In re Duofold
Inc., 184 USPQ 638 (TTAB 1974). Moreover, even if copies
had been submitted and the registrations were in agreement
with the list provided by applicant, such third-party
registrations, which are not evidence that the marks therein
are in actual use, would have little probative value on the
issue of whether confusion is likely in this case. In re
Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983). The
registrations would, however, be competent to show that
others in the field have adopted and registered marks
containing the word “chic,” and that as used in many of
them, the word projects its dictionary meaning of “smart
elegance of style and manner.” Here, notwithstanding any
alleged weakness in the word “chic”, each of the registered
CHIC marks is still substantially similar in appearance and
commercial impression to applicant’s mark CASUAL CHIC.
Accordingly, we conclude that purchasers and
prospective customers familiar with registrant’s CHIC marks
for clothing, would be likely to believe, upon encountering
applicant’s substantially similar mark CASUAL CHIC for the
identical or otherwise closely related goods, that the goods
emanate from or are associated with or sponsored by the same
source.
Ser No. 74/570,013
8
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.
J. D. Sams
R. L. Simms
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board