Dr. Ing. h.c. F. Porsche AG

Trademark Trial and Appeal Board

Apr 24, 2002

No. 75826886 (T.T.A.B. Apr. 24, 2002)

Mailed: April 24, 2002
Paper No. 20
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Dr. Ing. h.c. F. Porsche AG
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Serial No. 75/826,886
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Jana L. France of Fish & Richardson P.C., P.A.
for Dr. Ing. h.c. F. Porsche AG.
Katherine Stoides, Trademark Examining Attorney, Law Office
109 (Ronald Sussman, Managing Attorney).
_______
Before Wendel, Bucher and Bottorff, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Dr. Ing. h.c. F. Porsche AG has filed an application
to register the mark CAYENNE for “clothing, namely,
anoraks, beachwear, belts, blazers, blouses, blousons, body
suits, cardigans, coats, dresses, footwear, foul weather
gear, gloves, headwear, infantwear, jackets, jeans, jogging
suits, leather coats, leather jackets, overalls, pants,
parkas, polo shirts, scarves, shirts, shorts, ski wear,
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Ser No. 75/826,886
2
skirts, slacks, sleepwear, snow suits, socks, suits, sun
visors, sweat bands, sweatshirts, sweaters, T-shirts,
tennis wear, neckties, tights, tops, tracksuits, trousers,
underwear, vests and wrist bands.”1
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the mark CAYENNE, in the stylized format
shown below, which is registered for “ladies’, men’s and
children’s leather and suede clothing, namely, coats,
jackets, dresses, skirts, pants, vest, belts, shawls and
sweaters; and ladies’, men’s and children’s cotton, wool,
acrylic and man-made fiber sweaters.”2
1 Serial No. 75/826,886, filed October 19, 1999 under Section
44(e), claiming a right of priority under Section 44(d) based on
a German application. The application as filed included 18
classes of goods and services but after two requests to divide,
only the Class 25 goods remain in the original application and
only these goods are involved in this appeal. Upon review of the
German registration which has been submitted to perfect
applicant’s filing under Section 44(e), we note that there
appears to be a discrepancy in that German Registration No. 399
30 713 does not correspond to application Serial No. 399 35
813.7/12. In the event this application goes forward after
appeal, this discrepancy should be further investigated.
2 Registration No. 1,573,488, issued December 26, 1989, first
renewal.
Ser No. 75/826,886
3
The refusal has been appealed and applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont3 factors that are
relevant in view of the evidence of record. Two key
considerations in any du Pont analysis are the similarity
or dissimilarity of the respective marks and the similarity
or dissimilarity of the goods with which the marks are
being used, or are intended to be used. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976); In re Azteca Restaurant Enterprises,
Inc., 50 USPQ2d 1209 (TTAB 1999).
Looking first to the respective goods, we find that
both applicant’s and registrant’s goods include items which
are identical as identified, namely, leather coats, leather
jackets and sweaters, and that other items of applicant’s
could be also be made of leather so as to be the same as
registrant’s, such as dresses, pants, belts and the like.
There is a definite overlap in the clothing items of
applicant and registrant, with the remaining items of
applicant falling within the category of being related
3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/826,886
4
wearing apparel. For purposes of our analysis, we consider
the goods in part identical and otherwise closely related.
Furthermore, in the absence of any limitations in the
identification of goods in either the application or the
registration, we must assume that that the goods of both
applicant and registrant would travel in the same channels
of trade and be available to the same class of purchasers.
See Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Thus, we assume that
these clothing items would be available in the same retail
outlets to the same purchasers for purchase on the same
shopping trips. While applicant argues that certain of its
goods would not be likely to be sold in close proximity to,
or even in the same locations as, registrant’s goods, there
are many items which are identical and which could be sold
not only in the same type of retail stores, but also in the
same departments.
Turning to the respective marks, we find the CAYENNE
marks of applicant and registrant to be identical in
appearance, sound and connotation. Although registrant’s
mark is presented in a stylized cursive format, applicant
is seeking to register its mark in typed form and thus is
free to use the mark in any form it chooses, including one
very similar to that of registrant’s. See Squirto Co. v.
Ser No. 75/826,886
5
Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983).
In fact, from the materials submitted by applicant, it is
apparent that applicant intends to use its mark in a
similar cursive style.
Applicant’s major contention is that the overall
commercial impressions created by the marks are different,
in view of the manner on which the marks will be used in
the marketplace. Applicant argues that while registrant’s
mark will be viewed as a primary source identifier,
applicant’s mark will impact consumers as a secondary
source identifier when applied to apparel. Applicant
explains that it is a manufacturer of fine automobiles and
sports cars; that the mark CAYENNE will be used in
connection with its new sport utility vehicle which will be
introduced in 2003; and that its mark as it will appear on
clothing will be in a decorative or ornamental fashion.
Thus, applicant argues its mark, as encountered by
consumers in the marketplace, will identify applicant as
the secondary source for the goods.
It is well settled that matter which serves as part of
the aesthetic ornamentation of goods, such as clothing
items, may be registered as a trademark for such goods, if
it also serves a source-indicating function. See In re
Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993); In re Dimitri’s
Ser No. 75/826,886
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Inc., 9 USPQ2d 1666 (TTAB 1988). Ornamental matter may
additionally serve as an indication of source, if, for
example, it names the secondary source of the goods or if,
it is already a recognized trademark of applicant for other
goods or services. See in re Paramount Pictures Corp., 213
USPQ 1111 (TTAB 1982); In re Olin Corp., 181 USPQ 182 (TTAB
1973).
The basic flaw in applicant’s argument is that there
is no restriction in the identification of goods in its
application as to any particular manner of use of its mark.
The question of likelihood of confusion must be determined
on the basis of the goods as identified in the application,
rather than on the basis of evidence of actual or intended
use. See CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198
(Fed. Cir. 1983). Even if we had evidence of use of
applicant’s CAYENNE mark in an ornamental or decorative
manner, which we do not, it would be immaterial. The
application simply seeks registration of CAYENNE as a
trademark for various clothing items. Registrability is
determined on the basis of the description in the
application and restrictions on how the mark is intended to
be used will not be inferred. See J & J Snack Foods Corp.
v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed.
Cir. 1991).
Ser No. 75/826,886
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Nor is there any indication in the mark itself of any
secondary source of the goods. This is not a case similar
to Michael Caruso & Co. v. Estefan Enterprises, Inc., 994
F. Supp 1454 (S. D. Fla. 1998) wherein the marks involved
were BONGO for clothing and BONGOS CUBAN CAFE for souvenir
merchandise sold by a restaurant. There is an obvious
difference between the use of BONGO alone on clothing and
the use of BONGOS as part of an explicit reference to the
restaurant bearing this name on similar items of
merchandise. Here we have no reference to applicant in the
mark itself, nor to the sports utility van which will
originate from applicant. Moreover, at this point in time
there is no reason for consumers to recognize the mark as
one for a particular model of car originating from
applicant and thus recognize applicant as the secondary
source of the goods; the vehicle bearing the mark CAYENNE
has not yet been introduced on the market. While applicant
argues the fame of the PORSCHE mark and the various
vehicles sold thereunder, this is totally irrelevant
inasmuch as the house mark is not part of the mark before
us.
Applicant’s attempt to draw a parallel to the Board’s
decision in In re Sydel Lingerie Co, Inc., 197 USPQ 629
(TTAB 1977) as to the effect of manner of use of the marks
Ser No. 75/826,886
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on the commercial impression is to no avail. There the
determinative factor was the nature of the mark itself,
namely BOTTOMS UP, and the different commercial impression
which was projected as used on the respective goods,
underwear and men’s suits, coats and trousers. Here no
such distinction can be drawn; the term CAYENNE as used on
both applicant’s and registrant’s clothing items would
conjure up the same connotation, i.e., a spiciness or
similar reference to the cayenne pepper condiment. While
it is true that the Board also made reference to the
marketing environment in which the marks, as applied to the
goods, would be encountered, the Board did not reach beyond
the normal marketing arenas for the respective goods nor
the usual manner of sale for the clothing items as
identified in the application and registration. Here
applicant is asking us to make a distinction in marketing
environments, despite the fact that no such limitation or
restriction in manner of sale is reflected in the
application.
Finally, even if we were to assume that applicant’s
wearing apparel will only be sold as promotional items in
connection with its new vehicle, a likelihood of confusion
still exists with registrant’s use of the same mark on its
clothing items. See In re Phillips-Van Heusen Corp., 228
Ser No. 75/826,886
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USPQ 949 (TTAB 1986)(applicant’s use of mark 21 CLUB for
shirts likely to cause confusion with registrant’s mark THE
21 CLUB for restaurant services and towels, in view of
known practice of use of marks by restaurants for
collateral items including clothing items). If applicant’s
claim of fame for its vehicles is taken into account, the
confusion which might arise could well be that of reverse
confusion as the CAYENNE sports utility vehicle becomes
known in the market. As explained by the Court in In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1688, 1690 (Fed.
Cir. 1987):
The trademark law not only protects the consumer
from likelihood of confusion as to commercial
sources and relationships, but also protects the
registrant and senior user from adverse commercial
impact due to use of a similar mark by a newcomer.
The term “reverse confusion” has been used to
describe the situation where a significantly larger
or prominent newcomer “saturates the market” with
a trademark confusingly similar to that of a smaller,
senior registrant for related goods or services. ...
The junior user does not seek to benefit from the
goodwill of the senior user; however, the senior user
may experience diminution or even loss of its mark’s
identity and goodwill due to extensive use of a
confusingly similar mark by the junior user.
[Citations omitted].
Thus, even under the circumstances which applicant has
outlined for the intended use of its mark, confusion
remains likely.
Ser No. 75/826,886
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Applicant has also pointed to the sophistication of
the purchasers as a significant factor in the avoidance of
confusion. While we would agree that the purchase of items
such as leather coats may entail a certain amount of care
and deliberation, even sophisticated customers are not
immune to source confusion. This is especially true when
the marks being used on the goods are substantially the
same, as is the case here, and the goods are either
identical or closely related. See In re Total Quality
Group Inc., 51 USPQ2d 1474 (TTAB 1999).
Accordingly, in view of the virtual identity of the
respective marks and the intended use by applicant of its
mark on clothing items either identical or closely related
to those of registrant, we find confusion likely.
Decision: The refusal to register under Section 2(d)
is affirmed.
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