FG Industries

Trademark Trial and Appeal Board

Nov 29, 1999

No. 74686523 (T.T.A.B. Nov. 29, 1999)

Paper No. 15
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re FG Industries, Inc.
___________
Serial No. 74/686,523
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Thomas M. Onda and Sarah A. Cunniff of Steinhart & Falconer
for applicant.
Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
____________
Before Seeherman, Walters and McLeod, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
FG Industries, Inc. has filed a trademark application
to register the mark BLANC NOIR for “casual wear, namely
shorts, skirts, pants, jackets, socks, shoes and hats.”1
The application includes the statement “Blanc Noir is
French for White Black.”
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
Serial No. 74/686,523
2
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark shown below, previously registered for
“clothing and outer wear, namely, T-shirts, jean sweat
shirts, sweat pants, jackets, shorts, pants, and caps and
hats,”2 that, if used on or in connection with applicant’s
goods, it would be likely to cause confusion or mistake or
to deceive. The registration includes a disclaimer of
MADRID and AMERICA apart from the mark as a whole; and the
statement “the English translation of the words BLANC and
NOIR is ‘white’ and ‘black’.”
Applicant has appealed. Both the applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.

1 Serial No. 74/686,523, in International Class 25, filed June 7, 1995,
based on use in commerce, alleging dates of first use and first use in
commerce as of February 11, 1991.
2 Registration No. 2,103,725 issued October 7, 1997, to Toni J. Prados,
in International Class 25.
Serial No. 74/686,523
3
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See, In re E. I. duPont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion in this case, two key
considerations are the similarities or dissimilarities
between the marks and the similarities or dissimilarities
between the goods. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Considering, first, the goods, except for “socks,”
“shoes,” and “skirts,” the items listed in applicant’s
identification of goods are identical to the same items
listed in the cited registration. “Skirts” are clothing
items reasonably related to several of registrant’s other
items of clothing, such as “pants” and “shorts.” It is
unnecessary, in view of the identity of the other items in
the application and registration, to determine whether
applicant’s recited “socks” and “shoes” are related to the
items of clothing in the cited registration. Additionally,
the fact that applicant’s goods are characterized as
“casual wear” and registrant’s goods are characterized as
“clothing and outer wear” is insignificant. As neither
identification of goods is limited, we assume that the
Serial No. 74/686,523
4
goods travel in all the normal channels of trade to the
usual consumers of such goods.
We turn, next, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are sufficiently similar in terms of
appearance, sound, connotation and commercial impression
that confusion as to the source of the goods offered under
the respective marks is likely to result.
The Examining Attorney contends that BLANC NOI’R is
the dominant portion of registrant’s mark and is identical
to applicant’s mark; that the “subordinate features” of the
registered mark do not distinguish it from applicant’s
mark; that the letters MDC in registrant’s mark “are so
stylized and intertwined with the bulldog design that [the
letters] would be perceived as part of the design”; that
“the design features [of registrant’s mark] are less likely
to be impressed upon a purchaser’s memory, as the literal
portion would be most likely remembered and used in calling
for the goods [and] [t]hese features would therefore have
little or no origin indicating significance in
distinguishing the goods of registrant from those of
others”; and that MADRID and AMERICA have little
significance in registrant’s mark as they merely indicate
the geographic origin of the goods.
Serial No. 74/686,523
5
Applicant contends, on the other hand, that the
registrant’s mark “is a complex composite mark, consisting
of stylized initials, ‘MDC,’ several times larger than any
other element in the mark and displayed in the center[;] a
drawing of a bulldog is superimposed on the initials[;] the
remaining words are in much smaller print, arrayed at
compass points around the central figure[;] [and] the words
are arranged in clockwise order beginning from the top,
MADRID NOI’R AMERICA BLANC.”
We agree with the Examining Attorney that, although
the marks at issue must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See, In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). However, we disagree with the Examining Attorney’s
conclusions in this regard and agree with applicant that
the large and central design element, incorporating the
letters MDC, is the dominant portion of registrant’s mark.
While we believe that the words around the design are
intended to be read across, as “BLANC NOI’R,” and down, as
“MADRID AMERICA,” we find these words to be significantly
smaller than, and peripheral to, the letters MDC and the
Serial No. 74/686,523
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design element of the mark. While the Examining Attorney
is correct that words often predominate over design
elements in a mark, it is not always the case, and, in
particular, it is not the case herein. Further, the design
element prominently features the letters MDC, which is a
literal portion of the mark and may be used in calling for
the goods.
Therefore, we conclude that in view of the substantial
differences in the commercial impressions of applicant’s
mark and registrant’s mark, their contemporaneous use on
even the same or related goods involved in this case is not
likely to cause confusion as to the source or sponsorship
of such goods.
Decision: The refusal under Section 2(d) of the Act
is reversed.
E. J. Seeherman
C. E. Walters
L. K. McLeod
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Serial No. 74/686,523
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