Gruppo Arcte S.p.A.

Trademark Trial and Appeal Board

Oct 4, 2007

No. 78165903 (T.T.A.B. Oct. 4, 2007)

Mailed:
October 4, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gruppo Arcte S.p.A.
________

Serial No. 78165903
_______

Jeffrey H. Kaufman and Beth A. Chapman of Oblon Spivak
McClelland Maier & Neustadt, P.C. for Gruppo Arcte
S.p.A.

Tamara Lee, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Bucher, Holtzman and Zervas, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Gruppo Arcte S.p.A. seeks registration on the
Principal Register of the following mark:

for goods identified in the application as follows:
“clothing, namely coats, mantles, raincoats,
dresses, suits, skirts, jackets, parkas,
tuxedos, vests, shorts, waistcoats, shirts,
sport shirts, blouses, jerseys, sweaters,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78165903
- 2 -
blazers, cardigans, underwear, bathrobes,
bathing suits, sun suits, sweat suits,
nightgowns, pajamas, corsets, bras, wind
resistant jackets, ties, neckties, shawls,
foulards, gloves, caps, hats and belts” in
International Class 25.1
This case is now before the board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark
Examining Attorney has found that applicant’s mark, when
used in connection with the identified goods, so resembles
the following two marks:
BACI for “footwear, namely women’s
shoes” in Int. Class 25; 2 and

for “footwear, namely women's
shoes,” in International Class
25,3

1 Application Serial No. 78165903 was filed on September 19,
2002 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. Applicant states that the term
“Baci Rubati” means “stolen kisses” when translated into English.

2 Registration No. 2581200 issued to Baci Shoes, Inc. on June
18, 2002 based upon an application filed on August 25, 2000
claiming first use anywhere and first use in commerce at least as
early as July 14, 2000.

3 Registration No. 2581234 issued to Baci Shoes, Inc. on June
18, 2002 based upon an application filed on September 8, 2000
claiming first use anywhere and first use in commerce at least as
early as July 14, 2000. Although the United States Patent and
Trademark Office’s bibliographic information for this
registration shows “Kiss” to be a “pseudo mark” for the word
“Baci,” no explicit translation statement appears in either one
of the cited registrations.

Serial No. 78165903
- 3 -
as to be likely to cause confusion, to cause mistake or to
deceive.
The Trademark Examining Attorney and applicant have
fully briefed the case. We affirm the refusal to register.
In arguing for registrability, applicant contends that
its mark is not similar to the cited marks as to sound,
appearance, meaning or commercial impression; that the
common feature of the marks (i.e., “BACI”) has been
registered and approved for publication for clothing and
jewelry-related goods owned by different entities including
pending applications owned by registrant; that the third-
party registrations placed into the record by the Trademark
Examining Attorney are of minimal value to establish the
relatedness of the goods herein; that even with the
advertisements placed into the record, we cannot presume
that every product sold in a department store is related to
every other product sold in a department store; and that
merely because various items of clothing and shoes are worn
on the human body does not establish the relatedness of the
goods within the meaning of the Trademark Act.
By contrast, the Trademark Examining Attorney contends
that consumers will most likely recall the first word of
applicant’s mark, BACI; that neither the stylization of
applicant’s mark nor the stylization of registrant’s
Serial No. 78165903
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stylized mark can overcome the similarities between the
literal portions of such marks; that the differences in the
connotations of the marks, when translated, are not
significant enough to change the commercial impressions of
the marks; that previous decisions of the Board have found
shoes to be closely related to other items of clothing; and
that the advertisements demonstrate that items of women’s
clothing and women’s shoes are sometimes coordinated, might
well be purchased during the same shopping trip, and often
travel through the same channels of trade.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood
of confusion is based upon our analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on this issue. See 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, however, two key, although not
exclusive, considerations are the similarities between the
marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Serial No. 78165903
- 5 -
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).
The Goods
As seen above, the goods in the cited registrations
are identified as “footwear, namely women’s shoes.”
Applicant’s goods are identified as “clothing, namely
coats, mantles, raincoats, dresses, suits, skirts, jackets,
parkas, tuxedos, vests, shorts, waistcoats, shirts, sport
shirts, blouses, jerseys, sweaters, blazers, cardigans,
underwear, bathrobes, bathing suits, sun suits, sweat
suits, nightgowns, pajamas, corsets, bras, wind resistant
jackets, ties, neckties, shawls, foulards, gloves, caps,
hats and belts.”
As to this critical du Pont factor, as argued by
applicant, there are certainly no per se rules that goods
in the same general field and bearing the same or similar
marks must inevitably result in a likelihood of confusion.
Nonetheless, the Trademark Examining Attorney points to a
variety of prior likelihood of confusion decisions in the
clothing field that have held many different types of
apparel and footwear to be related under Section 2(d) of
the Act. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974
Serial No. 78165903
- 6 -
F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992) [Court affirmed
Board’s holding of likelihood of confusion between KangaROOS
(and design) for clothing, namely,
athletic shoes, sweatsuits and
athletic shirts and KANGOL (and
design) for golf shirts having vs.

collars]; General Shoe Corporation v. Hollywood-Maxwell
Co., 277 F.2d 169, 125 USPQ 442 (CCPA 1960) [Court affirmed
Board’s holding of likelihood of confusion for the same
mark INGENUE used on shoes and hosiery, and bras]; Cambridge
Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623,
128 USPQ 549 (CCPA 1961) [WINTER CARNIVAL for women’s boots
v. men’s and boys’ underwear]; Jockey Int’l, Inc. v.
Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) [ELANCE
for underwear v. ELAAN for neckties]; In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991)
[stylized ESSENTIALS for
women’s shoes v. ESSENTIALS
for women’s clothing,
vs. ESSENTIALS
namely, pants, blouses, shorts and jackets]; In re Apparel
Ventures, Inc., 229 USPQ 225
(TTAB 1986) [SPARKS BY
SASSAFRAS for women’s vs.
Serial No. 78165903
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separates, namely blouses, skirts and sweaters v. SPARKS
(stylized) for shoes, boots and slippers]; In re Pix of
America, Inc., 225 USPQ 691 (TTAB 1985) [NEWPORTS for
women’s shoes v. NEWPORT for outer shirts]; In re Alfred
Dunhill Limited, 224 USPQ 501 (TTAB 1984) [DUNHILL in
stylized lettering for various
items of men’s clothing including
belts v. DUNHILL for shoes]; vs. DUNHILL

In re Kangaroos U.S.A., 223 USPQ
1025 (TTAB 1984) [BOOMERANG for
athletic shoes v. BOOMERANG (and
design) composite mark for men’s
BOOMERANG

vs.

shirts]; In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB
1982) [OMEGA for hosiery v. slacks]; In re Cook United,
Inc., 185 USPQ 444 (TTAB 1975) [GRANADA for men’s suits,
coats, and trousers v. ladies’ pantyhose and hosiery]; and
Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400
(TTAB 1964) [SLEEX for women’s brassieres and girdles v.
men’s slacks].
Among the many use-based, third-party registrations
covering items of clothing such as those identified by
applicant, and footwear such as shoes as identified by
registrant, the Trademark Examining Attorney has pointed to
a representative sampling of registrations, as follows:
Serial No. 78165903
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ZAC POSEN for “clothing for women, namely, coats,
raincoats, anoraks, parkas, blazers,
jackets, cardigans, boleros, capes, sport
coats, wind resistant jackets, suits,
tuxedos, vests, dresses, evening gowns,
jumpers, skirts, pants, slacks, trousers,
jeans, dungarees, jumpsuits, overalls,
coveralls, flight suits, gym suits,
jogging suits, sweat pants, thermal
underwear, shorts, skorts, rompers,
culottes, shortalls, shirts, sweaters,
jerseys, blouses, tunics, sweatshirts, t-
shirts, halter tops, tank tops, bodysuits,
unitards, camisoles, chemises,
undershirts, slips, foundation garments,
bodyshapers, brassieres, bustiers, garter
belts, briefs, boxer shorts, bloomers,
underpants, panties, lingerie, loungewear,
nightgowns, night shirts, negligees,
robes, pajamas, hosiery, pantyhose,
tights, knee highs, leg warmers, leggings,
socks, head wear, hats, caps, hoods, head
bands, neckwear, neckties, bow ties,
ascots, pocket squares, scarves, shawls,
neckerchiefs, gloves, mittens, belts,
sashes, cummerbunds, shoes, footwear,
boots, sandals, slippers, sneakers,
athletic shoes, athletic footwear,
galoshes, swimwear, bathing suits, bathing
trunks, beachwear, beach coverups,
sarongs, ski wear, ski suits, ski pants,
ski gloves, …” in International Class 25;4
SEVEN CANYONS for “clothing for men, women and children,
namely, shirts, sweatshirts and shorts,
sweatbands, pants, t-shirts, golf shirts,
sweaters, socks, shoes, jackets, hats, and
visors” in International Class 25;5
AQUA TEEN
HUNGER FORCE
for “clothing for men, women and children
- namely, shirts, t-shirts, sweatshirts,
jogging suits, trousers, pants, shorts,
tank tops, rainwear, … skirts, blouses,
dresses, suspenders, sweaters, jackets,
coats, raincoats, snow suits, ties, robes,
hats, caps, sun visors, belts, scarves,
sleepwear, pajamas, lingerie, underwear,
boots, shoes, sneakers, sandals, booties,
slipper socks, swimwear …” in Class 25;6

4 Registration No. 2667345 issued on December 24, 2002.

5 Registration No. 2780675 issued on November 4, 2003.

6 Registration No. 2870546 issued on August 3, 2004.

Serial No. 78165903
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PHOTOFIGHTER for “men's, women's and children's
clothing, namely, t-shirts, shirts, pants,
shorts, jackets, dresses, underwear,
namely, boxer shorts, briefs, panties, and
g-strings, swimwear, namely swimsuits,
bikinis, trunks, swimsuit coverups, hats,
socks, shoes” in International Class 25;7

for “men's, women's and children's
clothing, namely, sweatshirts, sweatpants,
shirts, jeans, jackets, coats, slacks,
short pants, overalls, suits, hats, head
and wristbands, dresses, skirts, rompers,
blouses, scarves, gloves, socks, belts,
neckties, undergarments, t-shirts, dress
shirts, collared shirts, rugby shirts,
polo shirts, knit shirts, and jerseys;
sports caps namely baseball caps, knit
caps, skull caps and visor caps; shoes,
namely, sneakers, boots and sandals …” in
International Class 25;8

for “mens, womens and childrens clothing
namely t-shirts, sweatshirts, shorts,
pants, jackets, gloves, pajamas, swim
suits, beach wear, wetsuits, skirts,
dresses, tank tops, coats, sweaters,
socks, belts, shoes, sandals, hats, caps,
and visors” in International Class 25;9

for “men's, women's and children's
clothing, namely, shirts, pants, shorts,
skirts, vests, dresses, jackets,
windshirts, T-shirts, shoes, socks, hats
and coats” in International Class 25;10

7 Registration No. 2898297 issued on October 26, 2004.

8 Registration No. 2899536 issued on November 2, 2004.

9 Registration No. 2899708 issued on November 2, 2004.

10 Registration No. 2900678 issued on November 2, 2004.

Serial No. 78165903
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for “men's and women's clothing,
namely, swimwear, bathing suits,
bikinis, cover-ups, tank tops, shirts,
skirts, dresses, shorts, jumpers,
capris, leggings, pajamas, robes,
jerseys, socks, underwear, gloves,
belts, ties, vests; headwear, namely,
caps and visors; and footwear, namely,
sandals, slippers, boots, and athletic
shoes” in International Class 25;11
EDWARDO BASSONI for “clothing and clothing accessories
for men, women and children, namely,
coats, jackets, gloves, headwear, hats,
caps, bonnets, earmuffs, stoles,
scarves, capes, ponchos, mittens,
handmuffs, vests, raincoats, overcoats,
cardigans, blazers, pullovers,
overalls, jumpers, sweaters, trousers,
jeans, pants, shorts, dresses, suits,
skirts, shirts, t-shirts, polos,
gilets, blouses, foulards, shawls,
ties, neckties, bow ties, swimwear,
shoes, boots, clogs, sandals, slippers,
sport coats, sport shirts, sweat pants,
sweat shirts, sweat shorts, sweat
suits, headbands, sweat bands, wrist
bands, athletic uniforms, body suits,
hoods, jerseys, jogging suits, jump
suits, pantsuits, warmup suits,
turtleneck sweaters, v-neck sweaters,
underwear, lingerie, pajamas, socks,
stockings, tights, leggings, and belts
made out of fabric, fabric substitute,
fur, imitation fur, leather, imitation
leather, shearling, imitation
shearling, wool or imitation wool” in
International Class 25;12
ALL IN WEAR for “mens, women and childrens
clothing, namely, pants, shirts,
jackets, sweaters, shoes, hats, socks,
skirts, blouses, dresses, sweat suits,
sweat pants, sweat shirts, shorts,
underwear, bras, undergarments,
hosiery, vests, swimwear, coats,
pajamas, gloves, bandanas, and belts”
in International Class 25;13

11 Registration No. 2910899 issued on December 14, 2004.

12 Registration No. 2910926 issued on December 14, 2004.

13 Registration No. 2911757 issued on December 14, 2004.

Serial No. 78165903
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TASMANIAN DEVIL for “clothing for men, women and
children - namely, shirts, t-shirts,
sweatshirts, jogging suits, trousers,
pants, shorts, tank tops, rainwear,
cloth baby bibs, skirts, blouses,
dresses, suspenders, sweaters, jackets,
coats, raincoats, snow suits, ties,
robes, hats, caps, sunvisors, belts,
scarves, sleepwear, pajamas, lingerie,
underwear, boots, shoes, sneakers,
sandals, booties, slipper socks,
swimwear … ” in International Class
25;14
CEZANNE for “clothing for men, women and
children, namely, coats, raincoats,
anoraks, parkas, blazers, jackets,
cardigans, boleros, sport coats, wind
resistant jackets, suits, tuxedos,
vests, dresses, evening gowns, jumpers,
skirts, pants, slacks, trousers, jeans,
dungarees, jumpsuits, overalls,
coveralls, flight suits, gym suits,
jogging suits, sweat pants, thermal
underwear, shorts, skorts, rompers,
culottes, shortalls, shirts, sweaters,
jerseys, blouses, tunics, sweatshirts,
t-shirts, halter tops, tank tops,
bodysuits, unitards, camisoles,
chemises, undershirts, slips,
foundation garments, bodyshapers,
brassieres, bustiers, garter belts,
briefs, boxer shorts, bloomers,
underpants, panties, lingerie,
loungewear, nightgowns, night shirts,
negligees, robes, pajamas, hosiery,
pantyhose, tights, knee highs, leg
warmers, leggings, socks, head wear,
hats, caps, hoods, head bands,
neckties, bow ties, ascots, pocket
squares, scarves, shawls, neckerchiefs,
gloves, mittens, belts, sashes,
cummerbunds, shoes, footwear, boots,
athletic shoes, athletic footwear,
galoshes, swimwear, bathing suits,
bathing trunks, beachwear, beach
coverups, sarongs … ” in International
Class 25;15

14 Registration No. 2913170 issued on December 21, 2004.

15 Registration No. 2917223 issued under Section 2(f) of the
Act on January 11, 2005.

Serial No. 78165903
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for “clothing for men, women and
children; namely, t-shirts,
sportshirts, warm-up suits,
sweatshirts, sweaters, polo shirts,
shorts, tops, pants, jeans, jackets,
skirts, dresses, jumpsuits, coats,
sleepwear, underwear, lingerie, suits,
socks, swimsuits, robes, shoes, belts”
in International Class 25;16
AIMAGE for “men's, women's and children's
clothing and accessories, namely,
dresses, suits, blouses, shirts, knit
tops, slacks, ties, jackets, sweaters,
trousers, pants, jeans, swimwear,
shorts, jumpers, outerwear in the
nature of blazers, coats, jackets,
anoraks, raincoats, rain slickers,
sport coats, and vests, and shoes,
neckwear, socks, underwear, pajamas,
robes, belts, hats, caps, gloves,
scarves, skirts, polo shirts, and
tuxedos; infants' and toddlers'
clothing, namely, overalls, rompers,
plastic baby bibs, cap and bootie sets,
and boots and shoes; women's intimate
apparel, namely, panties, bras, slips,
hosiery, petticoats, bloomers,
camisoles, bodysuits, nightgowns,
pajamas, robes, bed jackets and lounge
wear; women's wedding wear, namely,
bridal gowns, head pieces, veils, shoes
and related bridal accessories in the
nature of gloves, and garter belts and
fasteners sold as a unit” in
International Class 25;17
TURNAROUND for “clothing for men, women and
children, namely pants, shorts, shirts,
sweatshirts, t-shirts, skirts, dresses,
sweaters, blouses, bathrobes, jackets,
coats, gloves, mittens, scarves, ties,
hats, caps, pajamas, socks, hosiery,
underwear, boots, shoes, slippers,
belts, swim suits, swim trunks and
bandannas” in International Class 25;
“retail store services featuring
clothing, footwear and headwear” in
International Class 35;18 and

16 Registration No. 2919145 issued on January 18, 2005.

17 Registration No. 2919899 issued on January 18, 2005.

18 Registration No. 2921477 issued on January 25, 2005.

Serial No. 78165903
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MADE IN LOVE for “men’s and women’s clothing and
accessories, namely dresses, blouses,
pants, skirts, jackets, coats,
camisoles, vests, lingerie, slips,
bodices, scarves, and shoes” in
International Class 25.19

As acknowledged by the Trademark Examining Attorney,
third-party registrations are not evidence of commercial use
of the marks shown therein, or if in use, that the public is
familiar with them. Nevertheless, such registrations that
individually cover a number of different items and that are
based on use in commerce have some probative value to the
extent they suggest that the listed goods emanate from a
single source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky Duck
Mustard Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB 1988).
In further support of the refusal to register, the
Trademark Examining Attorney has made of record copies of
screenprints taken from Internet shopping websites (e.g.,
Nordstrom, Macy’s, Banana Republic and J. Crew) showing
that the same entity sells women’s shoes as well as items
of outerwear and clothing accessories. For example, the

19 Registration No. 2928286 issued on February 22, 2005.
Serial No. 78165903
- 14 -
J. Crew site that shows a pair of Cate
casual wedge sandals adds, “WITH THIS
STYLE, OUR EDITORS SUGGEST …” followed by
sales information for a matching
sweater, pair of pants and a belt.

Accordingly, even if the items were sold in different
fashion boutiques, specialty shops, or in different areas of
large department stores, the record shows that shoes and
items such as belts, sweaters and slacks are coordinated,
and thus, may be purchased together in a single shopping
excursion. That one might well purchase some of
applicant’s types of goods in order to coordinate them with
registrant’s types of footwear represents a relationship
stronger than just posing, as does applicant, the
relationship of any two random items that one might find
within a large department store.
In fact, it is well settled that goods need not be
identical or even competitive in order to support a finding
of likelihood of confusion; it is sufficient that the goods
be related in some manner or that the circumstances
surrounding their marketing are such that they would likely
be encountered by the same persons under circumstances that
could give rise to the mistaken belief that they emanate
from or are associated with the same source. See Monsanto
Serial No. 78165903
- 15 -
Co. v. Enviro-Chem Corp., 199 USPQ 590, 596 (TTAB 1978); and
In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992).
Based on the record before us, we readily conclude that
applicant’s goods, a variety of clothing items, are clearly
related to the cited registrant’s “women’s shoes,” and this
du Pont factor favors the position of the Trademark
Examining Attorney that there is a likelihood of confusion
herein.
Trade Channels and Conditions of Sales
Regarding the related du Pont factors focusing on the
respective trade channels and classes of purchasers, the
board must determine the issue of likelihood of confusion on
the basis of the goods as identified in the application and
the registration. See Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987). Because there are no
restrictions as to trade channels in either the application
or the cited registration, we must consider that these
respective goods could be offered and sold to the same
classes of purchasers through all the normal channels of
trade. See Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB
Serial No. 78165903
- 16 -
1994); and In re Elbaum, 211 USPQ 639 (TTAB 1981). As to
the relevant classes of prospective consumers, we find that
the purchasers of these respective goods overlap in that the
purchasers of registrant’s type of women’s shoes would also
be the purchasers for applicant’s items of clothing.
Therefore, the applicant’s and registrant’s respective
goods could be offered and sold to the same classes of
ordinary purchasers in the same stores.20 Hence, these two
related du Pont factors also support a finding of likelihood
of confusion.
The Marks
We turn next to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005). As shown above,

20 Although applicant argues that “expensive clothing and
shoes must be considered” (applicant’s reply brief, at 4) in
making our likelihood of confusion determination, we find,
instead, that in the absence of any limitations as to the retail
cost of products or the targeted audience(s), we must consider
the least sophisticated purchasers who may be looking for
inexpensive products, and hence, that such purchasers may
exercise a lowered standard of care.

Serial No. 78165903
- 17 -

applicant’s mark is BACI RUBATI in a
stylized format. The mark in cited
Registration No. 2581200 is BACI in standard character
format. The mark in Registration No. 2581234 is BACI in a
stylized format having a small heart
design functioning as the dot on the
terminal letter “I” and mimicking the heart-shaped look of
the initial letter “B.”
While we must consider the similarity or dissimilarity
of the marks when viewed in their entireties, “there is
nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of the mark, provided [that] the ultimate conclusion rests
on consideration of the marks in their entireties.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Applicant’s mark and registrant’s special form mark
both present the word “Baci” using a similar script for the
letters A-C-I. Yet there are obvious differences in the
appearance of these two marks if one subjects them to a
side-by-side comparison. However, under actual market
conditions, consumers generally do not have this luxury,
and hence, the proper test in determining likelihood of
Serial No. 78165903
- 18 -
confusion is not whether the marks can be distinguished in
a side-by-side comparison.
In this context, the Trademark Examining Attorney
argues that whenever both words and a design comprise the
mark, the words are normally accorded greater weight in
making a determination as to likelihood of confusion. This
is true because it is the literal portions of the marks
that are likely to make an impression upon purchasers and
would be remembered by them when calling for the goods or
services in the marketplace. In re Appetito Provisions
Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and Kabushiki Kaisha
Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985).
See also Giant Food, Inc. v. Nation’s Food Service, Inc.,
710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983).
The only literal portion of the cited stylized mark
and the entirety of the cited typed mark, is the word
“Baci,” a term that appears to be totally arbitrary as
applied to women’s shoes. The Trademark Examining Attorney
contends that because “Baci” is the first word in
applicant’s mark, this is the portion that consumers are
likely to remember and focus upon. In her opinion, the
later appearance of the word “Rubati,” albeit in larger-
sized letters, does not eliminate the confusing similarity
of these respective marks. However, particularly for those
Serial No. 78165903
- 19 -
consumers unable to translate the Italian word, “Rubati,”
we cannot agree with the Trademark Examining Attorney that
the word “Baci” will appear to be more dominant than the
larger word, Rubati, merely because of its prior placement
within the composite. On the other hand, because of the
inclusion of the initial word “Baci,” which is the entirety
of registrant’s mark, the marks are quite similar in sound.
Furthermore, for those who know Italian, the word “Rubati”
will be viewed as simply modifying the first word, “Baci.”
As to connotations, the Trademark Examining Attorney
contends that the mere addition of the word “Rubati” is not
sufficient to avoid a likelihood of confusion herein.
Whether the kiss is a regular kiss (“baci”) or a “stolen
kiss” (“baci rubati”), either one is still a kiss. This
commonality in meaning is especially important given the
consuming public’s fallibility of memory, as noted above.
Applicant is reminded that the emphasis is on the likely
recollection of the average customer, who normally retains
a general rather than a specific impression of trademarks
or service marks. Spoons Restaurants, Inc. v. Morrison,
Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d. No. 92-1086 (Fed.
Cir. June 5, 1992); and In re Steury Corporation, 189 USPQ
353 (TTAB 1975).
Serial No. 78165903
- 20 -
As to the commercial impressions of the respective
marks, we find that registrant’s marks and applicant’s mark
would all appear to represent some form of “Baci,” or
“Kiss” brand of clothing. None of the other identifiable
components in either of the special form marks detracts
from this impression. Rather, to the contrary, the heart
imagery in registrant’s second cited registration, for
example, merely reinforces the “kiss(es)” impression.
Hence, we find that these marks convey substantially the
same commercial impression.
As to this critical du Pont factor, we agree with the
Trademark Examining Attorney that it supports a likelihood
of confusion.
The number and nature of similar marks in use on similar goods
Applicant has argued that inasmuch as the term “Baci”
has been registered or approved for publication for related
goods by several different entities, consumers are
accustomed to distinguishing BACI marks based on other
factors. Information Resources, Inc. v. X*Press
Information Services, 6 USPQ2d 1034 (TTAB 1988); and Plus
Products v. Star-Kist Foods, Inc., 220 USPQ 541 (TTAB
1983). However, the two pending applications owned by
Serial No. 78165903
- 21 -
registrant were abandoned21 and the sole third-party
registration entered into the record by applicant has
expired.22 Consequently, on this record, it appears that
the BACI mark is strong when used in connection with
women’s shoes.
Conclusion
In summary, we find that applicant’s goods are related
to registrant’s goods under Section 2(d) of the Act; that
applicant’s and registrant’s respective goods could be
offered and sold to the same classes of ordinary purchasers
in the same stores; that the marks are similar, especially
as to sound, connotation and commercial impression; and
that on this record, the term “Baci” is a strong source
indicator when used in connection with women’s shoes.
Decision: The refusal to register this mark under
Section 2(d) of the Lanham Act is hereby affirmed.

21 Application Serial Nos. 78112615 and 78112616 were both
filed on March 5, 2002 and both abandoned on August 12, 2004.

22 Registration No. 1788855 issued on August 17, 1993 for the
mark BACI for children’s jewelry, but was cancelled in 2004 when
it was not renewed.