Loewe, S. A.v.Fierres, Inc.

Trademark Trial and Appeal Board

Aug 1, 2002

No. 91119784 (T.T.A.B. Aug. 1, 2002)

Paper No. 11
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Loewe, S.A.
v.
Fierres, Inc.
_____
Opposition No. 119,784
to application Serial No. 75/794,377
filed on September 8, 1999.
_____
Marie Driscoll of Fross Zelnick Lehrman & Zissu, P.C., for
Loewe, S.A.
Juan-Carlos Fierres of Martinez Odell & Calabria for
Fierres, Inc.
______
Before Cissel, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On September 6, 1999, Fierres, Inc., a Puerto Rican
corporation, filed the above-referenced application to
register the mark “RALPH LOEWE” on the Principal Register
for “clothing namely casual pants, shirts, jeans,” in Class
25. The application was based on applicant’s assertion that
it possessed a bona fide intention to use the mark in
commerce on or in connection with these products. The mark
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 119,784
2
was passed to publication after applicant amended the
application to state that the name shown in the mark, “Ralph
Loewe,” does not identify a particular living individual.
A timely Notice of Opposition was filed on August 2,
2000, by Loewe, S.A., a Spanish corporation located and
doing business in Madrid, Spain. As grounds for opposition,
opposer alleged that since as early as 1973, well before any
date upon which applicant can rely, opposer has used the
mark “LOEWE” as a trademark in the United States for
clothing; that opposer owns incontestable United States
Trademark Registration No. 1,276,262, registered on May 1,
1984, for the mark “LOEWE” and design for “clothing for men
and women, namely, jackets, coats, vests, suits, shirts,
blouses, pants, skirts, t-shirts, bathing suits, ties,
scarves, pocket squares and belts”; that the mark applicant
seeks to register is “strikingly similar in sound,
appearance and commercial impression” to opposer’s mark;
that the goods set forth in the application are the same as
or closely related to the goods with which opposer uses its
registered mark; and that in view of these facts, confusion
would be likely if applicant were to use the mark it seeks
to register in connection with the goods listed in the
opposed application.
Opposition No. 119,784
3
Opposer’s pleaded registered mark is shown below.
At applicant’s request, the Board extended the time for
applicant to answer the Notice of Opposition. Applicant
timely filed an attempt to answer opposer’s pleading, but
applicant’s response was insufficient, so the Board, on
November 28, 2000, allowed applicant additional time in
which to file a proper responsive pleading. Applicant did
so on December 28, 2000, denying the essential allegations
set forth in the Notice of Opposition.
A trial was conducted in accordance with the Trademark
Rules of Practice. Only opposer, however, took testimony or
introduced evidence. Opposer made of record its pleaded
registration, applicant’s responses to opposer’s first set
of interrogatories and requests for production, and the
testimonial deposition, with exhibits, of Phillipe Soussand,
opposer’s president.
Only opposer filed a brief. An oral hearing before the
Board was not requested.
The issues presented in this proceeding are priority
and likelihood of confusion. Based on careful consideration
Opposition No. 119,784
4
of the record and opposer’s brief, we hold that opposer has
met its burden of establishing both that it has priority and
that confusion would be likely if applicant were to use the
mark it seeks to register on the goods set forth in the
application.
The record establishes that opposer is a well-known
fashion house which operates a network of over one hundred
retail outlets all over the world, including in the United
States, where for more than twenty years it has been
marketing clothing, fragrances and fine leather goods under
the “LOEWE” trademark. The line of products marketed under
this mark includes a wide variety of products, ranging from
garments costing thousands of dollars to shampoo which can
be purchased for as little as twenty dollars. As noted
above, opposer’s valid, subsisting and incontestable
trademark registration covers clothing for both men and
women, including pants and shirts, which are the same
products listed in the opposed application for registration.
Opposer has generated large volumes of annual sales of its
“LOEWE” brand products by means of extensive promotional
efforts. The record shows that opposer’s “LOEWE” mark and
its registered mark combining this name with the design are
well known in this country and throughout the world, and
that opposer’s products bearing the “LOEWE” mark are highly
regarded for their quality and style.
Opposition No. 119,784
5
As noted above, the opposed application is based on
applicant’s assertion that it intends to use the mark “RALPH
LOEWE” in connection with casual pants, shirts and jeans.
Applicant has not claimed use of the mark it seeks to
register, so the earliest data which applicant can claim for
priority is the date its application was filed, August 2,
2000. Zirco Corp. v. American Telephone and Telegraph Co.,
21 USPQ2d 1542 (TTAB 1991). This is more than two decades
after opposer began using its “LOEWE” mark on the same or
closely related products. Opposer’s priority is clear.
The only remaining question, then, is whether confusion
would be likely if applicant were to use its mark in
connection with the goods set forth in the application.
In the case of In re E. I. duPont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), the predecessor to our
primary reviewing court set out the factors to be considered
in determining whether confusion is likely. Chief among
these factors are the similarity of the marks as to
appearance, pronunciation, meaning and commercial
impression, and the similarity of the goods as set forth in
the application and the registration, respectively.
As noted above, the goods in the application are
encompassed within the goods specified in opposer’s pleaded
registration, and the testimony establishes that the goods
Opposition No. 119,784
6
overlap. The trade channels through which they move and the
customers who purchase them are the same.
Accordingly, this case boils down to whether the mark
applicant seeks to register, “RALPH LOEWE,” so resembles
opposer’s mark “LOEWE” and its registered mark, “LOEWE” and
design, that if applicant were to use its mark in connection
with the goods set forth in the application, confusion would
be likely. This is clearly the case. Confusion would be
likely because applicant’s proposed mark is quite similar to
opposer’s marks.
It is well settled that in determining whether
confusion is likely, we must consider the marks in their
entireties, but that under appropriate circumstances, one
portion of a mark may play a more dominant role in creating
the commercial impression of the mark as a whole. In re
National Data Corp.,753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Applying this principle to the case at hand, we find
that the surname "LOEWE,” which is the mark that opposer has
used for decades, is the dominant component of both the mark
applicant seeks to register, “RALPH LOEWE," and the
registered mark pleaded by opposer. These marks all create
similar commercial impressions in connection with the
identical items of apparel this case presents because they
would all be understood to be references to the same
Opposition No. 119,784
7
designer, “Loewe,” who would appear to be using his full
name in some instances and only his surname in others.
Because the mark applicant seeks to register is similar
to both opposer’s registered mark and it’s other pleaded
trademark and the goods with which applicant intends to use
its mark are in part identical to those with which opposer
has used and registered its marks, confusion would be
likely.
DECISION: The opposition is sustained and registration
to applicant is refused.