Healthy’s, Inc.

Trademark Trial and Appeal Board

Feb 1, 2001

No. 75380362 (T.T.A.B. Feb. 1, 2001)

2/1/01 Paper No. 18
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Healthy's, Inc.
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Serial No. 75/380,362
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Jeffrey L. Van Hoosear of Knobbe, Martens, Olson & Bear, LLP for
Healthy's, Inc.
Jeffrey S. Molinoff, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
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Before Cissel, Hohein and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Healthy's, Inc. has filed an application to register
the mark "KARMA KULA" for "men's, women's and children's
clothing, namely athletic footwear, bandannas, bathing suits,
bathing trunks, blouses, bodysuits, caps, coats, dresses,
footwear, hats, head bands, jackets, jeans, jogging suits, jump
suits, leotards, neck ties, night shirts, outerwear, overalls,
pajamas, pants, play suits, polo shirts, pullovers, raincoats,
robes, romper[s], scarves, shirts, shorts, snow suits, socks,
stockings, sweat shirts, sweat pants, sweat bands, sweaters,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/380,362
2
sweat jackets, suits, sun visors, suspenders, t-shirts, tights,
tops and bottoms."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "KARMA," which is registered for "clothing, namely, shorts,
pants, shirts, T-shirts, sweat shirts, jackets, coveralls and
caps,"2 as to be likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed,3 but
an oral hearing was not requested. We affirm the refusal to
register.
1 Ser. No. 75/380,362, filed on October 28, 1997, which alleges a bona
fide intention to use the mark in commerce.
2 Reg. No. 2,174,015, issued on July 14, 1998, which sets forth dates
of first use of March 14, 1997.
3 The Examining Attorney, in his brief, has raised an objection to the
"new evidence" submitted as exhibits to applicant's initial brief,
contending that such evidence is untimely under Trademark Rule
2.142(d) and thus should not be considered. Applicant, in its reply
brief, faults the Examining Attorney for "carelessness" and asserts
that the "evidence which the Examining Attorney objects to as being
'new evidence' was clearly evidence already made of record during the
prosecution of the subject application ...." While applicant, in its
request for reconsideration and other responses filed on or prior to
the filing of its notice of appeal, did indeed raise arguments in
which it referred to various factual assertions, applicant did not
submit any actual evidence as proof of those assertions, such as
copies of the specimens contained in the file of the cited
registration and copies of Patent and Trademark Office records
(pertaining to, among other things, a number of co-pending
applications filed by applicant and a variety of third-party
applications and registrations), until it filed the exhibits attached
to its initial brief. Accordingly, while the Examining Attorney is
correct that such "new evidence" is untimely under Trademark Rule
2.142(d), we nevertheless have considered the dictionary definition of
"kula" which is included with applicant's Exhibit 2 inasmuch as it is
settled that the Board may properly take judicial notice of dictionary
definitions. See, e.g., Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983). Moreover, and in any event, even if we were to consider the
Ser. No. 75/380,362
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The determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), "in any likelihood of confusion
analysis[,] two key considerations are the similarity of the
goods and the similarity of the marks."4 Here, inasmuch as
applicant's goods are identical in part to registrant's goods and
are otherwise closely related thereto, the focus of our inquiry
is on the similarities and dissimilarities in the respective
marks when considered in their entireties. Moreover, as pointed
out in Century 21 Real Estate Corp. v. Century Life of America,
remainder of the "new evidence" submitted by applicant, it would not
be persuasive of a different result. This is because, as accurately
pointed out by the Examining Attorney in his brief, none of the co-
pending applications filed by applicant as its Exhibit 3, and which
presently have been or will be allowed, is for the same goods as are
involved herein, nor are any of the third-party applications and
registrations for "marks ... used in conjunction with goods or
services related to clothing." (Furthermore, it should be noted that
third-party applications are evidence only that the applications have
been filed and nothing else.) Finally, with respect to the copies,
submitted as applicant's Exhibit 1, of the specimens contained in the
file of the cited registration, it is pointed out that even if
registrant uses its mark in connection with a separate design, such
use is legally irrelevant and immaterial in this case inasmuch as the
issue of likelihood of confusion must be decided on the basis of the
mark sought to be registered by applicant and the mark shown in the
cited registration. See, e.g., Sealy, Inc. v. Simmons Co., 265 F.2d
934, 121 USPQ 456, 459 (CCPA 1959); Burton-Dixie Corp. v. Restonic
Corp., 234 F.2d 668, 110 USPQ 272, 273-74 (CCPA 1956); Hat Corp. of
America v. John B. Stetson Co., 223 F.2d 485, 106 USPQ 200, 203 (CCPA
1955); and ITT Canteen Corp. v. Haven Homes Inc., 174 USPQ 539, 540
(TTAB 1972).
4 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."
Ser. No. 75/380,362
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970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert.
denied, 506 U.S. 1034 (1994), ["[w]hen marks would appear on
virtually identical goods ... , the degree of similarity [of the
marks] necessary to support a conclusion of likely confusion
declines."]
Applicant argues that confusion is not likely because,
when considered in their entireties, the respective marks are
sufficiently different in overall sound, appearance, meaning and
commercial impression due to the presence of the term "KULA" in
its mark, which is lacking in registrant's mark. In particular,
applicant argues in its initial brief, although notably without
evidentiary support, that "the term KULA means 'magic' in
Sanskrit" and that, as shown by the dictionary excerpts attached
as its Exhibit 2, "the term KULA also has multiple meanings in
the Hawaiian language."5 Applicant consequently contends that
"the term KULA is not a nonsensical term," as asserted by the
Examining Attorney in arguing that the word "KARMA" dominates
applicant's mark, and therefore that "it is obvious that the
combination of the term KARMA with the term KULA results in a
different connotation as compared to just the term KARMA."6
5 As set forth in the Hawaiian Dictionary (1986) at 178, we judicially
notice that such meanings include "1. n. Plain, field, open country,
pasture .... 2. n. Source; container .... 3. n. Basket-like fish
trap. Rare. 4. nvi. School, academy; to teach school, go to school;
to hold school or class sessions .... 5. Also gula. nvs. Gold;
golden."
6 While applicant additionally asserts, in its initial brief, that its
"KARMA KULA mark creates an entirely distinct commercial impression,
completely separate and apart from the impressions conveyed by the use
of the word KARMA standing alone," because "it uses the mark as the
name of a 'superhero' type character," suffice it to say that a
Ser. No. 75/380,362
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The Examining Attorney, citing a definition of record
of the word "karma," which the American Heritage Dictionary of
the English Language (3rd ed. 1992) defines, inter alia, as
meaning "3. Informal. A distinctive aura, atmosphere, or
feeling,"7 maintains on the other hand that confusion is likely
inasmuch as the marks at issue, due to the shared presence of the
word "KARMA," are similar in appearance, sound and meaning.
Specifically, as to applicant's mark, the Examining Attorney
argues that such word "appears to be the dominant one, as it is a
word commonly used in the English language and it is the first
word in the proposed mark." With respect to applicant's
contentions that the term "kula" in its mark means "magic" in
Sanskrit and has several meanings as well in Hawaiian, the
Examining Attorney insists that, "to the purchasing public for
clothing nationally, the term 'Kula' appears to be a nonsense
term, further adding to the dominance of the term 'Karma'" in
applicant's mark.
We are constrained to agree with the Examining Attorney
to the extent that the typical purchasers of clothing, including
retailers and wholesalers as well as ordinary consumers, would
not be familiar with the foreign or esoteric meanings of the term
"KULA" in applicant's mark. However, whether purchasers of items
of apparel would consequently pay little attention to such term
registration resulting from the subject application would not be so
limited and that applicant would be free to use its mark in the same
ways as those available to registrant with respect to use of its mark.
7 The same dictionary also lists such word as signifying "1. Hinduism
& Buddhism. The total effect of a person's actions and conduct during
Ser. No. 75/380,362
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as a nonsense term, as the Examining Attorney argues, is a
question which we need not decide, anymore than we need to
determine whether the word "KARMA" is the dominant portion of
applicant's mark as the Examining Attorney also contends.
Instead, as is readily apparent, it is sufficient that the word
"KARMA" in applicant's "KARMA KULA" mark clearly constitutes a
prominent and significant element thereof, resulting in a mark
which, when considered in its entirety, is substantially similar
in sound, appearance, connotation and commercial impression to
registrant's "KARMA" mark.
Consequently, we concur with the Examining Attorney
that confusion as to origin or affiliation is likely to occur
from contemporaneous use of the respective marks. Even assuming,
in this regard, that purchasers acquainted with registrant's
"KARMA" mark would notice the "KULA" feature of applicant's
"KARMA KULA" mark, they would nevertheless be likely to believe,
especially when encountering the respective marks in connection
with such identical and closely related items of clothing as t-
shirts, sweat shirts, caps, jackets, jump suits, pants, shirts,
shorts, and overalls or coveralls, that the goods emanate from,
or are sponsored by or associated with, the same source. In
particular, consumers could readily believe, for example, that
registrant has expanded its "KARMA" clothing by introducing a new
line of "KARMA KULA" apparel.
Decision: The refusal under Section 2(d) is affirmed.
the successive phases of the person's existence, regarded as
determining the person's destiny" and "2. Fate, destiny."
Ser. No. 75/380,362
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