Don Shapiro Industries, Inc.

Trademark Trial and Appeal Board

Feb 5, 1998

No. 74589365 (T.T.A.B. Feb. 5, 1998)

Paper No. 19
ejs
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB FEB 3, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Don Shapiro Industries, Inc.
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Serial No. 74/589,365
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Barry Kramer of Cummings & Lockwood for Don Shapiro
Industries, Inc.
Lesley LaMothe, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney)
_______
Before Seeherman, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Don Shapiro Industries, Inc. has appealed the refusal
of the Trademark Examining Attorney to register CONTOUR as a
trademark for “clothing, namely jeans, denim jackets,
button-down shirts, shorts and dress pants for women and
children.”1 Registration has been finally refused pursuant

1 Application Serial No. 74/589,365, filed October 24, 1994.
The application was initially filed based on a bona fide
intention to use the mark in commerce, and identified the mark as
CONTOURS. On April 19, 1996 applicant filed an amendment
alleging first use on October 1, 1995 and first use in commerce
Ser No. 74/589,365
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to Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on
the ground that applicant’s mark, as used on its identified
goods, so resembles the mark CONTOURS, registered for
women’s clothing, namely panties,2 as to be likely to cause
confusion or mistake or to deceive.
Applicant and the Examining Attorney filed briefs, and
applicant filed a reply brief. Applicant initially
requested an oral hearing, and then withdrew the request.
We affirm the refusal of registration.
In reaching our decision, we have considered all duPont
factors which are applicable to this case. In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973).
Turning first to the marks, we find that they are
virtually identical in appearance, pronunciation and
connotation. The fact that the registered mark has a final
“S”, while applicant’s mark does not, does not distinguish
them. Consumers are not likely to note the presence or
absence of this letter when viewing the marks individually.
And, under actual marketing conditions, consumers often do
not have the luxury to make a side-by-side comparison

on October 30, 1995. The specimens submitted with the amendment
to allege use showed the mark as CONTOUR, and we note that with
her appeal brief, the Examining Attorney stated that she had
agreed to allow the applicant to amend its mark to match the
specimens by deleting the final “S.” Accordingly, the drawing
has been amended to show the mark as CONTOUR.
Ser No. 74/589,365
3
between marks, and instead must rely on hazy past
recollections. In re Dassler KG v. Roller Derby Skate
Corp.¸206 USPQ 255 (TTAB 1980). It would appear that even
applicant did not note the difference between CONTOUR and
CONTOURS in connection with its own use of the mark. As
pointed out in footnote 1, applicant initially applied for
its mark as CONTOURS and, although the specimen labels
submitted with its amendment to allege use showed the mark
as CONTOUR, applicant continued to identify its mark as
CONTOURS in its amendment to allege use, request for
reconsideration and appeal brief.3
We have considered, but are not persuaded by,
applicant’s argument that the marks, because of the
differences of the goods with which they are used, convey
different connotations. We agree with applicant that
registrant’s mark CONTOURS for panties suggests a shapely
figure, but we think the same connotation is suggested by
applicant’s mark CONTOUR. The specimen labels submitted by
applicant reinforce this connotation, as they depict a woman
wearing form-fitting jeans. We would also point out that,
although applicant characterizes its goods as denim
clothing, the identification is not so limited, and includes

2 Registration No. 1,772,450, issued May 18, 1993.
3 We would also point out that if CONTOURS and CONTOUR did not
create the same commercial impression, applicant would not have
been permitted to amend its drawing to conform the mark shown
therein to that in the specimens.
Ser No. 74/589,365
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shorts and dress pants for women. To the extent that
applicant is correct that panties are used to accentuate the
body’s contours, shorts and dress pants can also be form
fitting and used to accentuate one’s shape.
With respect to the goods, there are obvious
differences between ladies’ panties and the women’s and
children’s outerwear identified in applicant’s application.
However, it is well-established that it is not necessary
that the goods of the parties be similar or competitive, or
even that they move in the same channels of trade to support
a holding of likelihood of confusion. It is sufficient that
the respective goods of the parties are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978)
The Examining Attorney has submitted three third-party
registrations which show, in each instance, that an entity
has registered a single mark for outerwear such as the goods
identified in applicant’s application and for underwear.4

4 See, for example, Registration No. 1,294,523 for PATAGONIA and
design for, inter alia, jackets, pants, shorts, shirts and
underwear; Registration No. 1,465,578 for THE AMERICAN DREAM for,
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These registrations have probative value to the extent that
they suggest that the listed goods are of a type which may
emanate from a single source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993).
The Examining Attorney has also made of record catalogs
which show that panties and goods such as those identified
in applicant’s application are sold in the same stores.
These, by themselves, would not necessarily demonstrate the
relatedness of the goods since, as applicant points out,
department stores may carry a wide range of clothing items.
Applicant has, in fact, submitted evidence that women’s
lingerie departments are separate from other women’s
clothing departments, including those that sell denim
clothing. Moreover, the Examining Attorney’s submissions do
not show that outerwear and panties are advertised together;
on the contrary, they appear to be advertised in different
sections of the catalog.
Nonetheless, we find that ladies’ panties and, in
particular, women’s jeans, shorts and dress pants, are
sufficiently related that confusion is likely to result if

inter alia, pants, jackets, shirts and undergarments; shorts,
slacks, shirts. The Examining Attorney submitted additional
third-party registrations, but they do not refer specifically to
underwear or panties, so we could not consider them to encompass
the goods listed in the cited registration. Nor, because of the
very nature of a housemark, do we find the third-party
registration for a house mark for a full line of clothing
persuasive on the issue of the relationship between the goods
involved herein.
Ser No. 74/589,365
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they were sold under, respectively, the marks CONTOURS and
CONTOUR. Although panties are underwear and the applicant’s
clothing is outerwear, they can be purchased and used by the
same consumer. Further, a consumer might well purchase both
types of items in the course of a single shopping trip, or
purchase panties specifically to be worn with the outerwear.
In this connection, we note that the clothing pictured in
applicant’s specimen label is somewhat revealing, and would
require panties that would fit with the cut of the
outerwear.
Applicant has submitted copies of several third-party
registrations for marks which include the term CONTOURS in
order to demonstrate that “CONTOURS is a weak mark entitled
to a limited scope of protection vis-à-vis other marks which
use the term CONTOURS for clothing products,” and “that
these registrations are able to co-exist on the Principal
Register without causing a likelihood of confusion with each
other.” Brief, p. 10.
Third-party registrations can, of course, be used to
show the meaning of a mark in the same way that dictionaries
do. Mead Johnson & Company v. Peter Eckes, 195 USPQ 187
(TTAB 1977). The registrations applicant has made of record
confirm the dictionary meaning of CONTOUR[S] for clothing,
Ser No. 74/589,365
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namely, that it suggests shapeliness.5 While in certain
cases the presence of a common suggestive element in two
marks may not be sufficient to support of holding of
likelihood of confusion, see Tektronix, Inc. v. Daktronics,
Inc., 187 USPQ 588 (TTAB 1975), in the present case there
are no other elements apart from the word CONTOUR[S] in
applicant’s mark and the registered mark which would enable
consumers to distinguish them.
The second part of applicant’s argument is that the
Patent and Trademark Office has determined that the various
third-party marks are not likely to cause confusion with
each other and that, by implication, applicant’s mark is not
likely to cause confusion with the cited registration.
Initially, we would point out that there are only five
registrations made of record by applicant. The other marks
are the subject of applications. Applicant argues that
because many of those applications were approved for
publication, they may “be taken as some evidence that the
Trademark Office did not find that the mark created a
likelihood of confusion with any prior filed mark.” Brief,
p. 12. We disagree. Until a mark is registered, the Patent
and Trademark Office may restore jurisdiction of the

5 We note that applicant has characterized the registered mark
as being “highly descriptive.” We cannot construe the third-
party registrations to demonstrate this; indeed, in view of the
Section 7(b) presumptions accorded to a registered mark,
Ser No. 74/589,365
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application to the Examining Attorney for issuance of a
refusal of registration. In any event, none of the
applications is as similar in mark and/or goods as
applicant’s mark and goods are to the cited registration.
Of the five registrations, one, for the mark COZY
CONTOURS, is owned by the owner of the cited registration.
Furthermore, CONTOUR 1 for gloves and THE CONTOUR for men’s
and boy’s outer shirts, are for goods which do not appear on
their face to be as related to ladies’ panties as
applicant’s goods are. The registration for COSMICONTOURS
for shirts has been cancelled, but in any case the mark
presents a different commercial impression from CONTOURS,
something applicant’s mark does not do. Finally, while
CONTOUR BRIEFS BY QUEEN CASUALS is for ladies’ panties, the
commercial impression of the marks is different, as CONTOUR
BRIEFS describes the goods, and in fact this part of the
mark has been disclaimed.
Decision: The refusal of registration is affirmed.
E. J. Seeherman
E. W. Hanak

applicant cannot make such a collateral attack on the cited
registration.
Ser No. 74/589,365
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G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board