Kathleen M. Moreau and Jeanette P. Moreau, dba KJ’s Unlimited

Trademark Trial and Appeal Board

Mar 4, 2009

No. 76669892 (T.T.A.B. Mar. 4, 2009)

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
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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
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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
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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
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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
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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
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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
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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.