Elegant Headwear Co. Inc.

Trademark Trial and Appeal Board

Apr 29, 2009

No. 76690957 (T.T.A.B. Apr. 29, 2009)

Mailed:
29 April 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Elegant Headwear Co. Inc.
________

Serial No. 76690957
_______

Myron Amer of Myron Amer, P.C. for Elegant Headwear Co.,
Inc.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Drost, Cataldo, and Taylor, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On June 30, 2008, Elegant Headwear Co., Inc.
(applicant) filed an application to register the mark SEA-
ME SWIMWEAR (in standard character form) on the Principal
Register for “infant’s clothing, namely, infant diaper
covers, not including vests” in Class 25. Serial No.
76690957. The application is based on applicant’s
allegation of a bona fide intention to use the mark in
commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76690957
2
The examining attorney has refused to register
applicant’s mark on two grounds. First, the examining
attorney held that applicant’s mark is not registrable
under the provisions of Section 2(d) of the Trademark Act
because it is likely to cause confusion, to cause mistake,
or to deceive as a result of a registration for the mark
SEE-ME in typed or standard character form for “vests” in
Class 25.1 15 U.S.C. § 1052(d). Second, the examining
attorney refused to register applicant’s mark without a
disclaimer of the assertedly merely descriptive term
“Swimwear” under the provision of Sections 2(e)(1) and 6(a)
of the Trademark Act. 15 U.S.C. §§ 1052(e)(1) and 1056(a).
After the examining attorney made the refusals under
Section 2(d) and the requirement for a disclaimer final,
applicant appealed.
The Requirements for a Disclaimer
We first address the issue of the requirement for a
disclaimer. The examining attorney argues that “diaper
covers may be worn for swimming. SWIMWEAR, therefore,
encompasses diaper covers worn for swimming.” Brief at
unnumbered p. 5. In her first Office action, she submitted
the following definition of swimwear: “clothing designed
to be worn for swimming, with swimsuits, or at a beach.”

1 Registration No. 1263080 issued January 3, 1984, renewed.
Ser. No. 76690957
3
See Brief at 3. The examining attorney also included
evidence from the internet that shows that there are diaper
covers that are worn while infants and small children are
at the beach or a pool. See, e.g.,
www.beachbugswimwear.com (“Diaper Covers – We love those
swim diapers but we sure don’t love the way they look! Now
even the youngest bathing beauties can look cute as can be
in these generously cut swim diaper covers”);
www.rehabmart.com (“Konfidence™ Swim Diaper Covers”); and
www.landsend.com (“Baby Swim Critter Diaper Cover”). The
examining attorney has also included several registrations
showing that the term “swimwear” has been disclaimed for
swimwear and retail services involving swimwear.2 See,
e.g., Registration Nos. 1910138 (RITCHIE SWIMWEAR), 1783745
(AMERICAN SWIMWEAR OUTLET), 1827548 (NEW HORIZONS
SWIMWEAR), 2567311 (OCEAN AVE SWIMWEAR), 3414535 (CAFFE

2 Third-party registrations can be used as a form of a dictionary
definition to illustrate how the term is perceived in the trade
or industry. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394
(TTAB 1987) (“[T]hird party registrations are of use only if they
tend to demonstrate that a mark or a portion thereof is
suggestive or descriptive of certain goods and hence is entitled
to a narrow scope of protection. Used in this proper, limited
manner, ‘third party registrations are similar to dictionaries
showing how language is generally used.’ 1 McCarthy, Trademarks
and Unfair Competition, § 11:26 at p. 516 (2d ed. 1984)”).
Ser. No. 76690957
4
SWIMWEAR), 3135734 (EVERYTHING BUT WATER THE SWIMWEAR
SOURCE), and 3379697 (1690 SWIMWEAR).3
On the other hand, applicant argues that “because of
the nexus between the words ‘SEA’ and ‘SWIMWEAR,’ that
‘SWIMWEAR’ has become distinctive and source-identifying,
and the disclaimer of the SWIMWEAR is therefore not
warranted.” Brief at unnumbered p.2.
“A term is merely descriptive if it immediately
conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is
used.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007). See also
In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d
1778, 1780 (Fed. Cir. 2003) (A “mark is merely descriptive
if the ultimate consumers immediately associate it with a
quality or characteristic of the product or service”) and
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001).
We look at the applicant’s term in relation to the
goods or services, and not in the abstract, when we

3 In its reply brief, applicant points out that the examining
attorney has submitted numerous registrations in which the mark
did not contain the word “Swimwear.” These registrations were
submitted to show that applicant’s and registrant’s goods were
related. Unfortunately, these registrations were mixed together
with the registrations showing a disclaimer of the term
“Swimwear.”
Ser. No. 76690957
5
consider whether it is merely descriptive. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978). See also MBNA, 67 USPQ2d at 1783 (“Board correctly
found MBNA’s emphasis on the regional theme through
marketing promotions and picture designs provides
circumstantial evidence of how the relevant public
perceives the marks in a commercial environment”). Courts
have long held that to be “merely descriptive,” a term need
only describe a single significant quality or property of
the goods or services. In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987); Meehanite Metal Corp.
v. International Nickel Co., 262 F.2d 806, 120 USPQ 293,
294 (CCPA 1959). “Evidence of the public’s understanding
of the term may be obtained from any competent source, such
as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other
publications.” In re Merrill Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987).
In this case, applicant’s goods are diaper covers, and
these identified goods include diaper covers that are used
for swimming. Inasmuch as “swimwear” includes clothing
designed to be worn for swimming, with swimsuits, or at a
beach, applicant’s diaper covers would include swimwear and
Ser. No. 76690957
6
the term is at least merely descriptive of the goods. We
add that we do not find that the nexus of the words in the
mark SEA-ME SWIMWEAR results in a unitary or distinctive
meaning for swimwear. Instead, the SEA-ME portion of the
mark would be viewed as the distinctive term and SWIMWEAR
would simply identify the type of goods sold under the
mark. Therefore, the examining attorney’s requirement for
a disclaimer is affirmed.
Likelihood of Confusion
The next question is whether there is a likelihood of
confusion between applicant’s mark SEA-ME SWIMWEAR used on
infant diaper covers4 and registrant’s SEE-ME mark for
vests. We consider the issue of likelihood of confusion
under the relevant factors set out in In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973). See also In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc.
v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir.
2000). In considering the evidence of record on these
factors, we must keep in mind that “[t]he fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of

4 It is not clear how “not including vests” limits the
identification inasmuch as there is no evidence that infant
diaper covers could otherwise include vests.
Ser. No. 76690957
7
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We begin by addressing the relatedness of applicant’s
and registrant’s goods. Applicant’s goods are infant’s
clothing, namely, infant diaper covers not including vests.
Registrant’s goods are vests. When we view the goods, we
must consider the goods as they are described in the
identification of goods. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”) and Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods”).

Ser. No. 76690957
8
As a consequence of these considerations, we must
assume that registrant’s goods include vests for children
and infants. We must also assume that, inasmuch as
applicant’s goods are identified simply as “infant diaper
covers not including vests,” they include all types of
infant diaper covers. Furthermore, several third-party
registrations made of record by the examining attorney
contain goods that are similarly identified. These
registrations show that the same entity has registered a
common mark for both diaper covers and vests. See, e.g.,
Registration Nos. 2106646 (RASHTI & RASHTI for “clothing
for newborns and infants, namely … vests … and diaper
covers”); 2206228 (POLAR BABIES for “children’s … vests …
diaper covers”); 2387527 (MINI ROCKET for “infant’s and
children’s clothing, namely … vests … textile infant diaper
covers”); 2612422 (B A B Y HEALTHTEX for “diaper covers …
vests”); 2559069 (TOTALLY FUN for “textile infant diaper
covers … vests”); 3394042 (DOLLS AND DIVAS for “infant and
girls’ clothing, namely …vests …infant diaper covers”);
1865313 (Design mark for “vests … infant one size diaper
covers”); 2425409 (JUICY FRUIT for “vests … diaper covers
for infants”); 3198571 (MILK BOMB for “clothing, namely,
men’s, women’s, children’s, toddler’s and infant’s … vests
Ser. No. 76690957
9
… infant diaper covers textile”); and 2858397 (AEIOU for
“clothing, namely … vests … diaper covers”).
Use-based, third-party registrations are relevant to
the extent that they may suggest that goods or services are
related. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988) (Although third-party registrations
“are not evidence that the marks shown therein are in use
on a commercial scale or that the public is familiar with
them, [they] may have some probative value to the extent
that they may serve to suggest that such goods or services
are the type which may emanate from a single source”). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786
(TTAB 1993). In this case, the registrations suggest that
a common entity is the source of both vests and infant
diaper covers.
Also, since there are no limitations in the
identification of goods, we must consider the channels of
trade and purchasers to be similarly unrestricted.
Moreover, neither the application nor the registration
limits the channels of trade through which the goods
move. In the absence of such a limitation we must
assume that the goods move through the normal channels
for such goods, and that with respect to these
particular goods, these channels are the same.

In re Sawyer of Napa Inc., 222 USPQ 923, 924 (TTAB 1983).
See also Morton-Norwich Products, Inc. v. N. Siperstein,
Ser. No. 76690957
10
Inc., 222 USPQ 735, 736 (TTAB 1984) (“Since there is no
limitation in applicant’s identification of goods, we must
presume that applicant's paints move in all channels of
trade that would be normal for such goods, and that the
goods would be purchased by all potential customers”); and
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)(“[W]here the
goods in a cited registration are broadly described and
there are no limitations in the identification of goods as
to their nature, type, channels of trade or classes of
purchasers, it is presumed that the scope of the
registration encompasses all goods of the nature and type
described, that the identified goods move in all channels
of trade that would be normal for such goods, and that the
goods would be purchased by all potential customers”).
Applicant’s “position is that on the record, it has
not been established that the respective goods are marketed
in a way that they would be encountered in a situation that
would create the incorrect assumption that they originate
form the same source.” Brief at unnumbered p. 3. Inasmuch
as registrant’s goods are not limited, they include vests
for infants and children. These goods would be sold in
some of the same stores that also sell infant diaper
covers. The purchasers of diaper covers and vests would
also overlap because that they would include parents and
Ser. No. 76690957
11
others who are purchasing clothing for infants. Therefore,
we find that applicant’s and registrant’s goods would be
encountered by the same purchasers in the same channels of
trade.
Now we turn to the similarity of applicant’s SEA-ME
SWIMWEAR and registrant’s SEE-ME marks. This du Pont
factor requires examination of the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005). Here, the marks are similar because they both
contain the phonetically identical term SEA-ME or SEE-ME.
The marks are different because the initial words have
different meanings, i.e., “see” referring to vision and
“sea” referring to a body of water. In addition, applicant
adds the highly descriptive term “Swimwear.” “Regarding
descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion.’”
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
The additional word “Swimwear” is unlikely to distinguish
Ser. No. 76690957
12
the marks because purchasers familiar with registrant’s
mark are likely to assume that registrant is now using its
mark on swimwear for infants.
Regarding the difference in the meaning of the first
word, we are not persuaded that this is a significant
difference. The slight difference in the spelling is
likely to be overlooked because consumers’ memories are
less than perfect.
The test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but
rather whether the marks are sufficiently similar in
terms of their overall commercial impression that
confusion as to the source of the goods or services
offered under the respective marks is likely to
result. The focus is on the recollection of the
average purchaser, who normally retains a general
rather than a specific impression of trademarks.

Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
1844, 1848 (TTAB 2004). See also Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573,
574 (CCPA 1973).
Here, we find that the similarities outweigh the
differences in the marks. The common “See Me” or “Sea Me”
part of the marks is phonetically identical and visually
similar. While the meaning of “see” and “sea” are
different, when these words are joined with a hyphen to the
word “me,” to many consumers, the term “sea-me” may be
interpreted as a simple misspelling of the term “see-me.”
Ser. No. 76690957
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The commercial impressions of the marks are also likely to
be similar when the dominant parts of the mark are so
similar. See Baseball America, 71 USPQ2d at 1848
(Opposer’s “mark BASEBALL AMERICA and applicant’s mark
BASEBALL AMERICANA are more similar than dissimilar when
viewed in their entireties in terms of appearance, sound,
connotation and overall commercial impression”). See also
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997) (Federal Circuit held that the
addition of the words “The” and “Cafe” and a diamond-shaped
design to registrant’s DELTA mark still resulted in a
likelihood of confusion).
Ultimately, when we consider that the marks SEE-ME and
SEA-ME SWIMWEAR are similar, that the goods (vests and
diaper covers) are related, and that the channels of trade
and purchasers are overlapping, we conclude that there is a
likelihood of confusion in this case.
Decision: The refusal to register applicant’s mark on
the ground of likelihood of confusion as well as the
examining attorney’s requirement for a disclaimer of the
term “Swimwear” are affirmed.