Industrial Zapatera JR S.A. De C.V.

Trademark Trial and Appeal BoardJan 16, 2007

No. 76589822 (T.T.A.B. Jan. 16, 2007)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: January 16, 2007 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Industrial Zapatera JR S.A. De C.V. ________ Serial No. 76589822 _______ Arturo Perez-Guerrero of The Law Offices of Arturo Perez- Guerrero for Industrial Zapatera JR S.A. De C.V. Linda A. Powell, Trademark Examining Attorney, Law Office 117 (Loretta C. Beck, Managing Attorney). _______ Before Seeherman, Bucher, and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Industrial Zapatera JR S.A. De C.V., a Mexican corporation, filed an application to register the mark shown below for “footwear for men, women, and children, namely, shoes, slippers, mules, and sandals, athletic shoes, beach footwear, and sneakers.”1 1 Serial No. 76589822 filed April 30, 2004, based on intent to use. Serial No. 76589822 2 Registration was refused under Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d), on the ground that applicant’s mark, proposed for use in connection with footwear, so closely resembles the mark BRENNTANO used in connection with “men’s, women’s and children’s clothing, namely, suits, skirts, sportcoats, overcoats, jackets, sweaters, dress and sports shirts, jumpers, sport uniforms, stockings, socks, trousers, vests, blouses, undershirts, neckties, hats, and headbands” as to be likely to cause confusion, to cause mistake, or to deceive.2 When the refusal was made final, applicant appealed. Applicant and the Examining Attorney have filed briefs. We affirm. The Examining Attorney contends that there is a likelihood of confusion between applicant’s mark and registrant’s mark because applicant’s mark BRANTANO and Design and registrant’s mark BRENNTANO are similar in sound and appearance and because footwear and clothing are 2 Registration No. 2200809 issued on November 3, 1998; Section 8 affidavit accepted. Serial No. 76589822 3 related products. In support of her refusal, the Examining Attorney submitted nine third-party use-based trademark registrations for both clothing and footwear. Applicant argued that the marks are not similar because the design element of applicant’s mark creates “a particular visual impression which is strikingly different from the plain printed block letters of the cited Registration”; because the marks are phonetically different; and because the first syllable of the marks (BRAN vs. BREN) is sufficiently different to distinguish the marks. (Applicant’s response to the First Trademark Office Action, pp. 4 – 6; Applicant’s Brief, p. 6). Applicant also argued that clothing and footwear are different products which would not be sold in the same sections of stores, that potential consumers for applicant’s footwear exercise a high degree of care, and that the common portions of applicant’s mark and registrant’s mark (i.e., “Bran,” “Brenn,” and “Tano”) are inherently weak, thereby minimizing any likelihood of confusion. (Applicant’s response to the First Trademark Office Action, pp. 6-12; Applicant’s Brief, pp. 2-6). In support of its last argument, applicant submitted seven third-party registrations and two applications for marks containing the elements “Bran,” “Bren,” or “Tano.” Serial No. 76589822 4 Our determination under Section 2(d) is based on an analysis of all the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In the case sub judice, the record consists of the application, the third- party registrations submitted by the Examining Attorney, and the third-party registrations and applications submitted by the applicant. A. The marks of the applicant and the registrant are similar. We start with the well-settled principle that the similarity or dissimilarity of the marks in their entireties is analyzed as to appearance, sound, connotation and commercial impression. In re E.I. du Pont de Nemours & Co., supra. While marks must be compared in their entireties, it is not improper to accord more or less weight to a particular feature of a mark. In re National Data Corporation, 753 F.2d 1056, 24 USPQ 749, 751 (Fed. Cir. 1983). In analyzing a composite mark comprising words and a design, the word portion of the mark (i.e., BRANTANO) is usually considered the dominant part of a mark because it Serial No. 76589822 5 is more easily remembered and used in communications. Consumers will not reference the rectangular design of applicant’s mark when asking for or discussing applicant’s footwear. CBS Inc. v. Morrow, 708 F.2d 157 9, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). Moreover, the design element of applicant’s mark is a relatively common rectangular shape that functions as a background for applicant’s word mark and, therefore, the design is unlikely to be remembered when consumers are confronted with a substantially similar word mark. In re Decombe, 9 USPQ2d 1813, 1814 (TTAB 1988). Accordingly, the dominant element of applicant’s mark is the term BRANTANO. Because registrant registered BRENNTANO in standard character form (typed drawing), its rights reside in this term and not in any particular depiction of it. Therefore, in our evaluation of registrant’s mark, the protection to be given the mark must include the display of BRENNTANO in lower-case lettering, which is the same type-style in which applicant’s mark is depicted. In re Melville Corp., 18 USPQ2d 1386, 1387 (TTAB 1991); Sunnen Products Co. v. Sunex International Inc., 1 UPSQ2d 1744, 1747 (TTAB 1987). We find that the marks BRANTANO and BRENNTANO are similar in appearance. The only difference in the two Serial No. 76589822 6 marks is the presence of a different vowel in the first syllable (BRAN vs. BREN) and a single “n”, rather than a double “nn,” at the end of the first syllable in applicant’s mark (BRAN vs. BRENN). In comparing the marks in their entireties, we find that the overall similarities of BRANTANO and BRENNTANO outweigh the dissimilarities. As for the sound of the marks, they are likely to be pronounced similarly. Although applicant’s mark contains an “A” in the first syllable, and the registrant’s mark contains an “E”, because of their positions in the marks, the sound of these two letters is not likely to be stressed, and the overall marks will sound the same. No meaning or significance has been attributed to either applicant’s mark BRANTANO or registrant’s mark BRENNTANO. Because, based on this record, we must consider BRANTANO and BRENNTANO as fanciful marks,3 and because the appearance and sound of the marks are similar, the commercial impression created by the marks is also similar. We find, therefore, that the marks are similar. 3 In response to the first Trademark Office Action, applicant stated that BRANTANO is not used as a surname, it does not have a geographic meaning, and it does not have a meaning in any language. In other words, it is a fanciful mark. Serial No. 76589822 7 B. Applicant’s footwear and registrant’s clothing are related products. The thrust of applicant’s argument is that footwear and clothing are sufficiently specific and distinct that they can co-exist under the marks BRANTANO and BRENNTANO. Applicant relies on several cases in support of its argument. However, “as so often said, each case must be decided on its own facts.” In re E.I. du Pont de Nemours & Co., supra; In re British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB 1984).4 It is well settled that it is not necessary that the goods of the applicant and registrant be similar or even competitive to support a finding of likelihood of confusion. Likelihood of confusion may be found if the goods are related in some manner and/or if the 4 Numerous decisions of this Board, the Court of Appeals for the Federal Circuit, and its predecessor court, the Court of Customs and Patent Appeals, have determined that footwear and clothing are related for purposes of determining likelihood of confusion. Cambridge Rubber Company v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (CCPA 1961)(WINTER CARNIVAL for men’s and boy’s clothing and WINTER CARNIVAL for women’s boots); General Shoe Co. v. Hollywood Maxwell Co., 277 F.2d. 169, 125 USPQ 443 (CCPA 1960)(INGENUE for shoes and INGENUE for brassieres); In re Keller, Heumann & Thompson Co. 81 F.2d 399, 28 USPQ 221 (CCPA 1936)(TIMELY for men’s shoes and TIMELY for men’s suits and coats); United States Shoe Corp. v. Oxford Industries, Inc., 165 USPQ 86 (TTAB 1970)(COBBIES BY COS COB for women’s and girl’s shirt-shifts and COBBIES for shoes); In re Pix of America Inc., 225 USPQ 691 (TTAB 1985)(NEWPORTS for shoes and NEWPORT for shirts); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991) (ESSENTIALS for women’s clothing and ESSENTIALS for women’s shoes). Serial No. 76589822 8 circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons under conditions that could give rise to the mistaken belief that they emanate from the same source. In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Seaguard Corporation v. Seaward International, Inc., 223 USPQ 48, 51 (TTAB 1984). In this case, we have men’s, women’s, and children’s clothing, on the one hand, and men’s, women’s and children’s footwear, on the other. Footwear and clothing are complementary products. Despite applicant’s argument to the contrary, we believe that these goods are related. A woman’s ensemble, which may consist of a coordinated set of pants, a blouse and a jacket, is incomplete without a pair of shoes, which match or contrast therewith. Such goods are frequently purchased in a single shopping expedition. When shopping for shoes, a purchaser is usually looking for a shoe style or color to wear with a particular outfit. The items sold by applicant and registrant are considered complementary goods. They may be found in the same stores, albeit in different departments. We are convinced that this is a sufficient relationship between the goods to support a holding of likelihood of confusion where both sets of goods are sold under the same mark. Serial No. 76589822 9 In re Melville Corp., supra. Because of the complementary nature of the goods, consumers are likely to believe that footwear and clothing sold under similar marks emanate from the same source. Moreover, the Examining Attorney submitted nine use- based registrations for both footwear and clothing. The third-party registrations submitted by the Trademark Examining Attorney have probative value to the extent that they serve to suggest that the products listed therein are of a kind that emanate from a single source. In re Infinity Broadcasting Corporation, 60 USPQ2d 1214, 1217- 1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The fact that the third-party marks have been adopted and registered for footwear and clothing is probative of the fact that those products are related. In view of the third-party registrations and the complementary nature of footwear and clothing, we find that applicant’s footwear and registrant’s clothing are related. Serial No. 76589822 10 C. Applicant’s footwear and registrant’s clothing move in the same channels of trade and classes of consumers. 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 or 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 products, their channels of trade and/or classes of purchasers. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Because there are no restrictions as to channels of trade in either the applicant’s or registrant’s description of goods, we must therefore consider the applicant’s footwear and the registrant’s clothing as if they were being sold in all of the normal channels of trade to all of the normal purchasers for such goods. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, supra; Toys R Us v. Lamps R Us, 219 USPQ 340, 343 (TTAB 1983). Channels of trade means how and to whom the products are sold. As indicated supra, footwear and clothing are related products that may be purchased by the same person in the same shopping trip in order to acquire an ensemble that is attractive from the standpoint of color and style. Serial No. 76589822 11 In re Melville Corp., supra; In re Pix of America, Inc., supra; B. Rich’s Sons, Inc. v. Freida Originals, Inc., 176 USPQ 284, 285 (TTAB 1972). Since both clothing and footwear are items purchased by ordinary consumers, the classes of purchasers overlap. Even if clothing items and footwear are sold in different areas of department stores, because the same consumers may purchase footwear and clothing at the same time, the same consumers may encounter these goods in the course of a single shopping trip. Moreover, one of the items listed in the registrant’s registration are socks. Socks are often sold in shoe stores or in the same department as shoes and, therefore, socks and shoes are sold in the same channels of trade. D. The degree of consumer care is not a significant likelihood of confusion factor. There is no evidence to suggest that purchasers of footwear are any more sophisticated than purchasers of clothing (or any other retail products). Thus, the purchasers are considered to be average consumers. Further, many of the footwear items identified in applicant’s application and the registrant’s registration can be inexpensive items that would be purchased without a great deal of care (e.g., beach footwear and socks). Serial No. 76589822 12 E. Registrant’s BRENNTANO mark is not a weak mark. Applicant argued that the common elements of applicant’s mark and registrant’s mark (i.e., “Bran,” “Bren,” and “Tano”) are so commonly used that registrant’s mark is only entitled to a narrow scope of protection. In support of its argument, applicant submitted copies of the following registrations:5 Registration Number Mark Goods 2,776,828 Handbags, tote bags, luggage, purses, wallets and backpacks 2,944,045 BRENT MORGAN Scarves and ties 2,074,835 ARNOLD BRANT Men’s clothing 1,118,836 Insulated coats and vests 2,899,706 MARK MONTANO Women’s and girls’ clothing 2,887,448 PLANTANO POWER Headwear, shirts, and jackets 1,493,633 BRENTANO’S Retail book store services Applicant’s argument is not well taken. First, third- party registrations, absent evidence of actual use of those marks, are entitled to little weight on the question of likelihood of confusion. Third-party registrations are not 5 Applicant submitted copies of Application Serial No. 78591362 for the mark CB C-BRAN and Design for baseball caps and Application Serial No. 76554080 for the mark BREN D WEAR COLLECTIONS for clothing. Third-party applications have no evidentiary value other than to show that they were filed. Serial No. 76589822 13 evidence of use of the marks shown therein. Without evidence of use, the third-party registrations prove nothing about the impact of the third-party marks on purchasers in terms of conditioning consumers as to the existence of similar marks in the marketplace. AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973); In re Hub Distributing, Inc., 218 USPQ 284, 285-286 (TTAB 1983). Third-party registrations, may of course, have probative value, in the manner of dictionary definitions, to show that a term has a significance in a particular industry. However, the limited number of registrations submitted by applicant, and the different connotations of the various elements in those marks (e.g., BRENT in BRENT MORGAN has the connotation of a given name), do not indicate that BRENNTANO has a common significance that would entitle this mark to a limited scope of protection vis-à-vis BRANTANO for related goods. We accordingly find that applicant’s mark BRANTANO and Design, if used in connection with “footwear for men, women, and children, namely, shoes, slippers, mules, and sandals, athletic shoes, beach footwear, and sneakers,” so closely resembles the registered mark BRENTANNO for clothing as to be likely to cause confusion, to cause mistake, or to deceive. Serial No. 76589822 14 Decision: The refusal to register is affirmed.