MAC Mode GmbH & Co. KGaA

Trademark Trial and Appeal Board

Jul 18, 2014

No. 79101237 (T.T.A.B. Jul. 18, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 17, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MAC Mode GmbH & Co. KGaA
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Serial Nos. 79099041 and 79101237
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Thilo C. Agthe of Wuersch & Gering LLP for MAC Mode GmbH & Co. KGaA.

Charlotte K. Corwin, Trademark Examining Attorney, Law Office 119, Brett J.
Golden, Managing Attorney.
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Before Seeherman, Wellington and Masiello, Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
This is a consolidated appeal1 involving the applications of MAC Mode GmbH &
Co. KGaA (“Applicant) for registration of the marks DREAM JEANS with designs,
as shown below, for “clothing, namely, pants, jeans” in International Class 25.

1 The appeal was consolidated by Board order mailed February 23, 2014, in response to
Applicant’s motion to consolidate.
Serial Nos. 79099041 and 79101237
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In both applications the word JEANS has been disclaimed and color is not claimed
as a feature of the mark. Application Serial No. 79099041, in which the word
JEANS is inverted, was filed on May 26, 2011; Application Serial No. 79101237 was
filed on June 20, 2011. Both applications are based on Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f(a) (request for extension of an International
Registration).
The Trademark Examining Attorney has refused registration of Applicant’s
marks pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s marks so resemble the marks DREAM JEANNE’S in
standard characters2 and DREAM JEANNES and design,3 shown below, both
owned by the same entity and registered for “women’s apparel, namely, jackets,
jeans, skirts and shorts,” that if used on Applicant’s goods they are likely to cause
confusion or mistake or to deceive.

Applicant and the Examining Attorney have filed briefs. We affirm the refusals
to register.

2 Registration No. 3971764, issued May 31, 2011.
3 Registration No. 3982583, issued June 21, 2011. The mark consists of the stylized
wording “DreamJeannes” appearing among clouds and stars.
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As a preliminary matter, we note the Examining Attorney’s objection to the
third-party registrations attached to Applicant’s appeal brief. This evidence was not
made of record during prosecution of the applications. Trademark Rule 2.142(d)
provides that the record in the application should be complete prior to the filing of
an appeal. Therefore, this evidence is untimely and we will not consider it. We
further note that with its requests for reconsideration Applicant submitted a list,
taken from the Patent and Trademark Office’s TESS database, of registrations of
marks in Class 25 that include the word DREAM(S) or JEANS. Such a list does not
make the registrations of record, nor was it submitted at a point where, if the
Examining Attorney had advised Applicant of the deficiency, Applicant could have
cured it. In any event the list of the registrations has little or no probative value.
Turning now to the substantive issue, our determination of the issue of
likelihood of confusion is based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in 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). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities 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).
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We first consider the du Pont factor of the similarity of the goods. Applicant does
not contest that this factor favors a finding of likelihood of confusion: “Applicant
admits at the outset that the goods named in Applicant’s applications and in the
cited registrations are, at the very least, closely related.” Brief, p. 3. In point of fact,
the “[women’s] jeans” identified in Applicant’s applications are legally identical to
the “jeans” identified in the cited registrations. The Examining Attorney has
submitted third-party registration evidence to show the relatedness of the
remaining goods, “pants,” in Applicant’s identifications of goods. In view of
Applicant’s acknowledgement that “pants” and the goods in the cited registrations
are related, there is no need for us to provide details of these registrations; suffice it
to say that we agree with Applicant and the Examining Attorney that the identified
“pants” are closely related to the clothing items in the registrations.
Since Applicant’s and the Registrant’s goods are in-part identical, they are
deemed to be sold in the same channels of trade to the same classes of purchasers.
The Examining Attorney has also submitted evidence that pants and, e.g., skirts
and shorts, are sold through the same channels of trade, such as the websites for
the Nordstrom and Macy’s department stores.4 Thus, the du Pont factors of the
similarity of the goods and channels of trade favor a finding of likelihood of
confusion.

4 The various items are displayed together on single webpages that were retrieved from a
search for the general category of “women’s apparel”; thus, this is not simply a situation
where the goods are part of a vast array of items that may be sold through an Internet
website, but are items that a shopper could encounter in close proximity in looking for
items of apparel.
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When marks would appear on virtually identical goods or services, as they do
here, 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, 1700 (Fed. Cir. 1992). With that in mind, we turn to a consideration
of the du Pont factor of the similarities of the marks.
First, the marks are identical in sound. Although the cited marks use the
spelling JEANNE’S and JEANNES, respectively, these words are likely to be
pronounced identically to the word JEANS in Applicant’s marks. Applicant has
argued that the registered marks will remind consumers of the television series “I
Dream of Jeannie,” and therefore they will pronounce the name as “Jeannie.” We
are not persuaded. First, it is unclear how many people actually know of and/or
would remember this television series, which, according to the evidence submitted
by Applicant, ran from 1965 to 1970. Second, the name in the title of the series is
“Jeannie,” not JEANNE or JEANNES. Even if there may be some people that view
and pronounce JEANNE’S or JEANNES as “Jeannie’s,” it is still reasonable to
conclude that a substantial number of consumers will pronounce the name as the
phonetic equivalent of “JEANS,” especially so given the context of the identified
goods. Accordingly, we find that it is likely that the marks will be pronounced
identically. Moreover, this similarity in pronunciation is significant because jeans
may be recommended orally, with one friend telling another that they got a pair of
DREAM JEANNES that they love. If the person then sees Applicant’s marks,
DREAM JEANS and design, on jeans, they are likely to believe that these are the
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recommended jeans. See Centraz Industries Inc. v. Spartan Chemical Co., 77
USPQ2d 1698, 1701 (TTAB 2006) (“inasmuch as the goods may be … recommended
by word of mouth, the similarity in sound is an important factor in comparing the
marks, especially where, as here, identical products are involved.”).
As for the meanings of the marks, although JEANNE’S/JEANNES in the cited
marks may have the meaning of a woman’s name, the evidence shows that this
term has been promoted as also having the meaning of jeans, the garment. For
example, the copy for “Quacker Factory ‘DreamJeannes’ Regular 5Pocket Knit
Denim Boot Cut Pants” has the title “Not Your Ordinary ‘Jeannes’” and the
statement “we’ve put the magic back in Jeannes!” QVC website, www.qvc.com.
Office Action mailed May 9, 2013, p. 11-12. To this extent, Applicant’s and the
Registrant’s marks have the same connotation. In addition, although normally the
word JEANS in Applicant’s marks would be understood as referring to the garment,
because “Jean” is a variant spelling of “Jeanne,” consumers familiar with the cited
special form mark, which uses the “plural” form of the name JEANNES as a
substitute for “jeans,” may view JEANS in Applicant’s marks also as the “plural”
form of the name “Jean.”
Applicant argues that Registrant’s mark “clearly evokes the image of an ideal
female person, and her goods, and even more likely a subtle reference to ‘I Dream of
Jeannie,’” while Applicant’s mark “refers to the goods and a quality of the goods
(that they are superior as well as made of denim),” brief, p. 7 and that “DREAM
functions as an adjective and modifies the term JEANS, evoking the impression in
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the consumer’s mind that these jeans are attractive, wonderful, ideal—a dream,”
and “creates a commercial impression and meaning in the mind of the consumer of
superior clothing.” Id. at 8.
As we said above, we are not persuaded that consumers would understand the
cited marks to be a reference to the TV series. In saying this, we have taken into
account Applicant’s argument that because of the cloud design in the cited
DREAMJEANNES mark, consumers will be reminded of an illustration for the TV
show, in which pink “smoke’ appears to be coming out of a bottle. The cloud design
in the Registrant’s mark is not likely to be regarded as smoke, as there are also
stars with the clouds. Instead, the cloud and stars design, when considered with the
words, will be understood as a reference to the night sky, reinforcing the meaning of
DREAM. Further, DREAM JEANNE’S in standard characters does not include a
design, and therefore the meaning of that mark must be assessed without reference
to a design element. As for the other meanings that Applicant suggests, we have
already discussed that, regardless of whether JEANNE’S/JEANNES in the cited
marks is viewed as a woman’s name or as wordplay on the generic term for the
garment, Applicant’s and the cited marks convey similar meanings and similar
commercial impressions.
As for the similarity or dissimilarity in appearance of the marks, we recognize
that the design elements in Applicant’s marks are a prominent part of each mark.
However, the words DREAM JEANS in the marks are a noticeable part of the
marks as well, and because they are the part of the marks by which consumers will
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refer to the goods, the words DREAM JEANS will be noted and remembered. Thus,
despite the differences in Applicant’s marks and the cited marks resulting from the
designs, there are also similarities due to the literal portions. In view of the identity
in pronunciation and the similar meanings and commercial impressions, we find
that the differences in appearance are not sufficient to distinguish Applicant’s
marks from the cited marks or, put another way, the similarity in sound, in
particular, outweighs any differences in appearance. Given that Applicant’s and the
Registrant’s marks are for legally identical goods, the marks are sufficiently similar
for us to find that this du Pont factor favors a finding of likelihood of confusion.
Applicant argues that the cited marks are weak, and therefore the registrations
should be given a limited scope of protection. However, as previously noted,
Applicant has not properly made the proffered third-party registrations of record,
nor has Applicant submitted any evidence of third-party use to support this
argument.
The foregoing are the only du Pont factors discussed by Applicant or the
Examining Attorney, and the only factors on which evidence has been submitted. To
the extent that any others are relevant, we treat them as neutral.
After considering all of the arguments and evidence, we find that Applicant’s
marks are likely to cause confusion with the two cited registered marks.
Decision: The refusals to register Applicant’s marks are affirmed.