Kathleen M. Moreau and Jeanette P. Moreau, dba KJ’s UnlimitedDownload PDFTrademark Trial and Appeal BoardMar 4, 2009No. 76669892 (T.T.A.B. Mar. 4, 2009) Copy Citation Mailed: March 4, 2009 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Kathleen M. Moreau and Jeanette P. Moreau, d.b.a. KJ’s Unlimited ________ Serial No. 76669892 _______ John K. McCulloch of McCulloch PLC for Kathleen M. Moreau and Jeanette P. Moreau, d.b.a. KJ’s Unlimited Martha L. Fromm, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney). _______ Before Quinn, Bucher and Wellington, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Kathleen M. Moreau and Jeanette P. Moreau, individual U.S. citizens, seek registration on the Principal Register of the mark shown below: THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 76669892 - 2 - for goods identified in the application, as amended, as “clothing, namely, hosiery, caps, t-shirts, and sweatshirts” in International Class 25.1 This case is before the Board on appeal from the final refusal of the Trademark Examining Attorney to register this mark based upon Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining Attorney has found that applicants’ mark, when used in connection with the identified goods, so resembles the following two marks, owned by the same party: WORD for, inter alia, “clothing, namely, pants, shirts, jackets, coats, sneakers, boots, hats, scarves, shorts, robes, socks, headbands, undergarments, footwear, head wear, t-shirts, sweatshirts, jogging suits, sweat pants, suspenders, tennis shoes, sweaters, scarves, ties, bolo ties, wrist bands, caps, visors, and headbands” in International Class 25;2 and THE WORD for “clothing, namely, t-shirts, sweat shirts, jogging suits, hats, jackets, suspenders, coats, sweaters, shirts, scarves, bolo ties, bow ties, tie, baseball caps, swim caps, head bands, footwear, athletic footwear, socks, scarves sneakers, robes, shorts, boxer shorts, gym shorts, sweat shorts, walking shorts, belts, dusters, tops” in International Class 25,3 1 Application Serial No. 76669892 was filed on December 4, 2006 based upon applicants’ allegation of a bona fide intention to use the mark in commerce. Color is not claimed as a feature of the mark. 2 Registration No. 2658674 issued to Gaynelle Hughes on December 10, 2002; Section 8 affidavit (six-year) accepted. 3 Registration No. 2743764 issued to Gaynelle Hughes on July 29, 2003. Serial No. 76669892 - 3 - as to be likely to cause confusion, to cause mistake or to deceive. Applicants and the Trademark Examining Attorney briefed the appeal. We affirm the refusal to register. Applicants argue that there is no likelihood of confusion given the great dissimilarity between the respective marks. By contrast, the Trademark Examining Attorney contends that the applied-for mark is confusingly similar to the registered marks because in applicants’ composite mark, the word portion is the dominant and most significant features of this mark. As to applicants’ design element, the Trademark Examining Attorney contends that applicants’ own arguments demonstrate that several very different connotations may be created by the presentation of this mark. Accordingly, there is no single, readily-apparent impression created by the combination of the design and word elements in the proposed mark. Hence, the Trademark Examining Attorney concludes that the marks all create the same commercial impression. 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 Serial No. 76669892 - 4 - facts in evidence that are relevant to the factors bearing on the 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). As to the number and nature of similar marks in use on similar goods, applicant argues that “… the word portion of appellants’ mark (“The Word”) is the subject of literally thousands of marks of others …. In support of appellants' position that the word elements WORD and THE WORD have little or no distinctiveness, there are submitted herewith … printouts of the PTO’s TESS system showing 17,388 live records of WORD and 16,472 of THE WORD.” (Applicants’ brief, at 9.) However, applicants have provided absolutely no probative evidence that the cited marks are weak for the named items of clothing. Applicants’ TESS evidence fails on several levels: • While we are happy that applicants did not submit seventeen thousand soft copies of applications and registrations, these one-page hit-list summaries are useless. • This search picks up both registrations and pending applications. An application shows only Serial No. 76669892 - 5 - that someone filed an application, and issued registrations do not prove use. • These records would include marks adopted for every good and/or service known to human-kind – not just clothing and related goods / services. • Finally, and most critically, perhaps a string of marks like TURKUAZ, DBF DOPPIABASE FRUTTA, SANITAS PER ESCAM, ZHEN-AO, FIERA, CASTELLO DI BOLGHERI, and MORFYAH should have provided the first clue that what causes fifteen to twenty-thousand live hits to pop up with applicants’ search statement is default language in the “Translations” field of the trademark database: “The English translation of the foreign word(s) … in the mark is ….” In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relationship 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). The most critical, and in this case determinative, du Pont factor involves the similarities or dissimilarities in the appearance, sound, connotation and commercial Serial No. 76669892 - 6 - impression of the respective marks. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). We note that the Court of Appeals for the Federal Circuit has held that when marks appear on virtually identical goods, as is the case herein, the degree of similarity necessary to support a conclusion of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). Applicants argue that the design portion of their mark is at least as dominant as the literal portion; that their mark must be considered in its entirety, rather than being dissected into component parts; and that because of the close and unique relationship between the word element and the design element of the mark, one viewing applicants’ mark would develop a mental association between the design element (the erect figures) and the word element, and pronounce the mark as "standing on The Word.” We find that the Trademark Examining Attorney has not improperly dissected the mark in concluding that the applied-for mark is confusingly similar to the registered marks. We agree with applicants that the design element in their mark is prominent, but find that consumers will call Serial No. 76669892 - 7 - for the goods by asking for “The Word” or “Word” clothing. Any consumers already familiar with THE WORD mark of registrant, for example, would think upon seeing applicants’ composite mark that this is just another variation on the display of registrant’s mark. Moreover, under actual market conditions, consumers generally do not have the luxury of making side-by-side comparisons. The proper test in determining likelihood of confusion is not a side-by-side comparison of the marks, but rather, the decision must be based on the similarity of the general overall commercial impressions engendered by the involved marks. See Puma-Sportschuhfabriken Rudolf Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980). These two marks will create the same connotations and commercial impressions. Beyond the fact both will be called for using “The Word,” we also agree with the Trademark Examining Attorney that applicants’ arguments demonstrate their own uncertainty about which one of several possible connotations may be created by the presentation of the imagery in this composite mark. The literal elements are identical, and there is no evidence that consumers will enunciate applicants’ mark as applicants contend they might, namely as “standing on The Word.” We find that this Serial No. 76669892 - 8 - interpretation is not likely even to those for whom the designation “The Word” will readily be seen as a shortened reference to “The Word of God” – a frequently-used term for the Christian Bible. Rather, as registrant has applied its marks to clothing, “Word” and “The Word” have to be deemed to be arbitrary usages of these terms. We find that because of the identical goods, the seeming strength of the mark as applied to clothing, and the similar commercial impressions created by applicants’ and registrant’s marks, confusion is likely between applicants’ mark and the marks in the cited registrations. Decision: The refusal to register under Section 2(d) of the Trademark Act is hereby affirmed. Copy with citationCopy as parenthetical citation