E & E Hosiery Inc.

Trademark Trial and Appeal Board

Jul 16, 2002

No. 75787260 (T.T.A.B. Jul. 16, 2002)

Mailed: July 16, 2002
Paper No. 17
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re E & E Hosiery Inc.
Serial No. 75/787,260
_______
Ezra Sutton for applicant.
Gina M. Fink, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______
Before Hairston, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
E & E Hosiery Inc. has filed an application to
register PLANET SOX as a mark on the Principal Register for
“hosiery and socks.”1 The Trademark Examining Attorney has
refused registration pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that the
1 Serial No. 75/787,260, filed August 30, 1999, based on a bona
fide intention to use the mark in commerce. The word “SOX” has
been disclaimed apart from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/787,260
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use of applicant’s mark for the identified goods is likely
to cause confusion with the mark reproduced below,
for “clothes, namely, socks, tee shirts, ties, [and]
suspenders.”2
The case has been fully briefed, but no oral hearing
was requested.
Before turning to the issue of likelihood of
confusion, we must discuss an evidentiary matter. With its
response to the Examining Attorney’s first Office action,
applicant submitted a search report from a private
company’s database of registered marks, which include the
word PLANET. The Examining Attorney did not object to this
material in her second Office action, and in fact discussed
the material on its merits. Thereafter, with its
2 Registration No. 2,082,764 issued July 29, 1997. The words
“COLLECTION” and “SOCKS” have been disclaimed apart from the mark
as shown.
Ser No. 75/787,260
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appeal brief, applicant submitted a second search report
from a private company’s data base of registered marks
which include the word PLANET. The Examining Attorney, in
her brief, at note 1, objects to this material, pointing
out that a search report from a private company’s data base
is not the proper way to make third-party registrations of
record and that Trademark Rule 2.142(d) requires that the
record in an application be complete prior to appeal. A
review of the material submitted with applicant’s brief
reveals that many of the registrations listed therein are
the same as those submitted with applicant’s response to
the Examining Attorney’s first Office action.
The Board generally will not consider copies of a
search report or information taken from a private company’s
database as credible evidence of the existence of the
registrations listed therein. In re Hub Distributing,
Inc., 218 USPQ 284 (TTAB 1983). In order to make third-
party registrations of record, copies of the actual
registrations or the electronic equivalent thereof, i.e.,
printouts of the registrations which have been taken from
the USPTO’s own computerized database, must generally be
submitted. In this case, however, the deficiency in making
third-party registrations of record by means of a search
report could have been remedied by applicant if the
Ser No. 75/787,260
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Examining Attorney had advised applicant in the second
Office action. Having failed to do so, we must deem the
Examining Attorney’s discussion of the third-party
registrations in her second Office action to be a
stipulation that the search report could be used as
evidence of the listed registrations. Accordingly, the
first search report submitted by applicant will be
considered. However, the second search report, which was
submitted with applicant’s brief, will not be considered
because as the Examining Attorney notes, it is untimely
pursuant to Trademark Rule 2.142(b).
We turn then to the issue of likelihood of confusion.
Our determination under Section 2(d) is based on analysis
of all of the probative facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours and Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key factors 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, 29 (CCPA 1976).
Turning first to the goods, we note that they are
identical in part (socks) and otherwise related items of
clothing. In view of the identity/relatedness of these
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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
merchandisers and department stores where the purchasers
would be the general public.
Applicant does not dispute this, but concentrates the
arguments in its appeal brief on the asserted weakness of
registrant’s mark and the asserted differences in the
marks. In particular, applicant maintains that marks that
include the word PLANET for clothing are weak marks and
therefore not entitled to a broad scope of protection. In
addition, applicant argues that the earth design in the
registered mark serves to distinguish the registered mark
from applicant’s mark.
While we have carefully considered applicant’s
argument, we nonetheless find that as applied to the
involved goods, applicant’s mark PLANET SOX and the
registered mark COLLECTION … PLANET SOCKS and design, are
substantially similar in overall commercial impression.
In considering the marks, we recognize that the earth
design in the registered mark cannot be ignored. However,
although we have resolved likelihood of confusion by a
consideration of the marks in their entireties, there is
nothing improper in giving more weight, for rational
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reasons, to a particular feature of a mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). In the present case, we believe it appropriate to
give greater weight to the PLANET SOCKS portion of the
registered mark because of the descriptive nature of the
disclaimed word COLLECTION. Also, PLANET SOCKS is the
portion of the registered mark most likely to be remembered
and used by customers in calling for registrant’s goods.
There is no question that the earth design in the
registered mark is noticeable, and if we were making a
side-by-side comparison of the mark, the differences in the
marks would be obvious. This, however, is not the proper
test. Rather, it is the overall commercial impression of
the marks, which will be recalled by the average consumer
that must be taken into account in determining likelihood
of confusion. This is particularly true in this case
because the goods can be relatively inexpensive and bought
off the shelf in mass merchandisers and department stores,
under conditions in which consumers will not take great
care in making their purchases. In addition, the earth
design in the registered mark does little to distinguish
the registered mark from applicant’s mark in overall
commercial impression because the design simply reinforces
the word PLANET.
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In view thereof, and while differences admittedly
exist between the respective marks, when considered in
their entireties, and according appropriate weight to the
dominant portions thereof, applicant’s mark PLANET SOX is
substantially similar in commercial impression to the
registered mark COLLECTION … PLANET SOCKS and design.
As to applicant’s argument that the registered mark is
weak and therefore entitled to a limited scope of
protection, the third-party registrations do not show that
the public is familiar with the marks shown in the
registrations, nor can they justify the registration of
what could be another confusingly similar mark. While such
registrations are probative of the fact the word PLANET has
appealed to others in the clothing field and that the word
is not particularly distinctive in the field, this fact
does not help to distinguish applicant’s mark PLANET SOX
and the registered mark COLLECTION … PLANET SOCKS and
design in terms of overall commercial impression. The word
PLANET, as used in both marks, conveys the same meaning
when combined with SOX and SOCKS, respectively. In short,
PLANET SOX and PLANET SOCKS are synonymous terms. Further,
we should also point out that none of the marks in the
third-party registrations is as similar to the registered
mark as is applicant’s mark.
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In sum, we find that in view of the substantial
similarity in the overall commercial impression of
applicant’s mark and the registered mark, their
contemporaneous use on the identical and related goods
involved in this case is likely to cause confusion as to
the source or sponsorship of the goods.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.
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