Garment Group, Inc.

Trademark Trial and Appeal BoardSep 16, 2013

No. 85238252 (T.T.A.B. Sep. 16, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 16, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Garment Group, Inc. _____ Serial No. 85238252 _____ Thomas I. Rozsa of Rozsa Law Group LC, for Garment Group, Inc. David I, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _____ Before Cataldo, Wellington, and Gorowitz, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Garment Group, Inc. (“applicant”) has appealed the refusal to register the mark WINDSOR COLLECTION (in standard characters) for men’s socks in Class 251 pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the mark WINDSOR COLLECTION (in standard characters) for “mail-order catalog services, computerized on-line ordering 1 Application Serial No. 85238252, filed February 9, 2011, pursuant to Section 1(a) of the Trademark Act, asserting first use and first use in commerce in August 2001. The word “Collection” was disclaimed. Serial No. 85238252 2 services and direct response retail services by means of print advertisements in the fields of clothing, shoes, purses, hats, clothing accessories, jewelry, watches, cosmetics, perfumes, fragrances, beauty aids, wigs, toupees and hairpieces, personalized apparel, gifts, scarves, handbags, timepieces, cleaning kits and eyeglasses” in Class 35.2 Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Although the marks at issue are identical, applicant argues that the commercial impressions are different. No evidence has been submitted in support of applicant’s position. Instead, applicant relies on a line of cases, which have held that in certain instances, the adoption of a mark that incorporates the mark of another may not result in likelihood of confusion. The marks at issue in all of the cases were different. For example, see In re Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974) (holding the mark MMI MENSWEAR is not confusingly 2 Registration No. 2839616, issued May 11, 1994, Section 8 Affidavit accepted and Section 15 Affidavit acknowledged. The word “Collection” was disclaimed. Serial No. 85238252 3 similar to descriptive mark MEN’S WEAR); and Colgate-Palmolive Co. v. Carter- Wallace, Inc., 432 F.2d 1400, 167 USPQ 520 (CCPA 1970) (holding the mark PEAK is not confusingly similar to the mark PEAK PERIOD given the different commercial impressions). The cases relied on by applicant are inapposite to the matter at bar where the marks are identical. Accordingly, the first du Pont factor (similarity or dissimilarity of the marks in their entireties) weighs heavily in favor of a finding of likelihood of confusion. Applicant argues that the mark WINDSOR COLLECTION is weak because there are a number of third-party applications and registrations co-existing in the Trademark Electronic Search System (TESS) for marks consisting of or containing the word WINDSOR.3 The third-party applications have no evidentiary value, other than to show the applications were filed. In re Toshiba Medical Systems Corporation, 91 USPQ2d 1266, 1270 n.8 (TTAB 2009); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 n.7 (TTAB 2007); In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002). Further, the list of registrations submitted by applicant has no evidentiary value since it merely provides registration numbers and marks. No information is provided about either the goods or services, or the 3 “A trademark search report is not credible evidence of the existence of the registrations listed in the report. In order to make third-party registrations properly of record in a proceeding such as this, applicant should submit copies of the registrations themselves, or the electronic equivalent thereof, namely, printouts from the electronic records of the Patent and Trademark Office's Trademark Automated Search System, currently known as “X-Search.” However, because the Examining Attorney has not objected to applicant's third-party registration evidence, but rather has treated the registrations as though they were properly of record, we will do the same.” In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996). Serial No. 85238252 4 owners of the registrations. Moreover, third-party registrations are generally entitled to little weight in determining the strength of a mark because they are not evidence that the mark is in actual use in the marketplace or that consumers have been exposed to the mark. See Fort Howard Paper Co. v. Kimberly-Clark Corp., 221 USPQ 732 (TTAB 1984); and In re Hub Distributing Inc., 218 USPQ 284 (TTAB 1983). Applicant discusses several registrations that appeared in the TESS list but, as discussed above, copies of which are not of record, and contends that if these registrations can co-exist, then its application can co-exist with the cited registration.4 Applicant’s contention presumes that the prior registration of a particular term should be of some persuasive authority in handling later applications involving similar marks. However, we are not privy to the records of the prior proceedings and are bound to make a decision based on the record before us. See AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (CCPA 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); and In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994). As such, we give no weight to the third-party registrations discussed by applicant – and contrary to applicant’s 4 There were eight registrations discussed. They are for the marks WINDSOR COURT for “hotel services, bar and restaurant services”; WINDSOR GARDENS for “coffee and tea”; WINDSOR SONOMA for “wine”; WINDSOR CASTLE for a variety of goods including coffee and tea; WINDSOR for “whiskey”; WINDSOR VINEYARDS for “retail store services featuring wine, provided to the consumer via internet”; WINDSOR PLYWOOD for wholesale and retail stores and distributorships featuring building materials and supplies; and WINDSOR for “metal fencing panels; metal gates; metal railings for balconies, decks, porches and stairs; pre-fabricated metal architectural columns.” Serial No. 85238252 5 contention, there is no evidence that the mark WINDSOR COLLECTION is weak when used in connection with the services set forth in the cited registration. Next we look at the similarities or dissimilarities between the goods and services. It is well settled that the issue of likelihood of confusion between applied- for and registered marks must be determined on the basis of the goods [and services] as they are identified in the involved application and cited registration, rather than on what any evidence may show as to the actual nature of the goods [or services], their channels of trade and/or classes of purchasers.” In re Total Quality Group Inc., 51 USPQ 1474, 1476 (TTAB 1999). Applicant’s goods are men’s socks. The services in the cited registration are mail-order catalog services, computerized on-line ordering services and direct response retail services by means of print advertisements in the fields of clothing, shoes, purses, hats, clothing accessories, jewelry, watches, cosmetics, perfumes, fragrances, beauty aids, wigs, toupees and hairpieces, personalized apparel, gifts, scarves, handbags, timepieces, cleaning kits and eyeglasses.” As applicant has noted, the cited registration covers mail-order catalog and on-line store services in the field of clothing. Therefore, since men’s socks are clothing items, the cited registration covers services involving the sale of men’s socks. “Store services and the goods which may be sold in that store are related goods and services for the purpose of determining likelihood of confusion.” In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992) (coats and retail outlets featuring camping equipment held related); See In re U.S. Shoe Corp., 8 USPQ2d 1938 (TTAB 1988) (cowboy boots and Serial No. 85238252 6 retail clothing stores featuring boots, related) and In re The United States Shoe Corporation, 229 USPQ 707 (TTAB 1985) (clothing store services related to uniforms). Thus, the cited mark could be used in association with the sale of applicant’s goods. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). Further, the examining attorney submitted website evidence reflecting the sale of men’s socks by on-line retailers, which consisted of web pages from: J. Crew (www.jcrew.com); L.L. Bean (www.llbean.com); and Land’s End (www.landsend.com). Noting that the registrant sells products other than clothing, applicant contends that “if a male consumer is looking specifically for socks, it is highly unlikely that they would turn to a mail-order catalog or online site which features a variety of products.” Appeal Brief, p. 8. Applicant submitted no evidence supporting its contention. Instead, applicant attached to its brief two pages from the registrant’s website5 to establish that socks are not sold on the site. The documents do not support applicant’s contention, however, even if they did, they would not affect the outcome in this appeal since, as discussed above, we are bound by registrant’s services as they are identified in the cited registration, rather than on what any evidence may show as to the actual nature of the services. In re Total Quality Group Inc., at 1476. Accordingly, we find that applicant’s goods are related 5 The general rule is that evidence submitted after the filing of an appeal is untimely. 37 CFR § 2.142 (d). However, since the examining attorney discussed the web pages introduced by the applicant, we will consider them. Serial No. 85238252 7 to the services in the cited registration and that this du Pont factor favors a finding of likelihood of confusion. The foregoing are the only du Pont factors raised by either the applicant or the examining attorney. To the extent that there are other relevant DuPont factors, we treat them as neutral. Having considered all the evidence and argument on the relevant DuPont factors, we find that applicant’s mark is likely to cause confusion with the mark in the cited registration. Decision: The refusal to register is affirmed.