Muzzie’s Inc.

Trademark Trial and Appeal Board

Jun 21, 2012

No. 85065751 (T.T.A.B. Jun. 21, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

Mailed: June 21, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Muzzie’s, Inc.
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Serial No. 85065751
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John S. Egbert of Egbert Law Offices, PLLC for Muzzie’s, Inc.

Alain J. Lapter, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).1
_______

Before Holtzman, Mermelstein, and Lykos, Administrative
Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

Muzzie’s, Inc. (“applicant”) filed an application to
register the mark displayed below

1 During ex parte prosecution of the application, Lindsey H. Rubin was
the assigned Trademark Examining Attorney.
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for the services, as amended, of “retail clothing boutiques
featuring young women's evening gowns, cocktail dresses and
evening footwear and accessories, namely, high heel shoes,
evening handbags and evening jewelry” in International Class 35.2
The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark
so resembles the registered mark shown below

for “clothing, namely hats, shirts and jackets,” in
International Class 25 and “retail store, mail order catalog,
direct order by telephone, and wholesale distributorship
featuring motorcycle parts and clothing manufactured by others”

2 Application Serial No. 85065751, filed June 17, 2010, pursuant to
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging 2000
as the date of first use anywhere and in commerce. The description of
the mark is as follows: “The mark consists of a drawing of a woman’s
head with the underlined term “MUZZIE’S” depicted in stylized
lettering directly to the right of the drawing.” Color is not claimed
as a feature of the mark.

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in International Class 35,3 that when used on or in connection
with applicant’s identified services, it is likely to cause
confusion or mistake or to deceive.
For the reasons discussed below, the Board affirms the
refusal to register.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in
the marks”). We discuss each of the du Pont factors as to which
applicant or the examining attorney submitted argument or
evidence.
First, we consider and compare the appearance, sound,
connotation and commercial impression of the marks in their

3 Registration No. 2060623, issued May 13, 1997 on the Principal
Register; renewed.
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entireties. In re E. I. du Pont De Nemours & Co., 177 USPQ at
567. In a particular case, any one of these means of comparison
may be critical in finding the marks to be similar. In re White
Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil
Co., 6 USPQ2d 1041, 1042 (TTAB 1987). The question is not
whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are
sufficiently similar in their entireties that confusion as to
the source of the goods or services offered under the respective
marks is likely to result. The focus is on the recollection of
the average purchaser, who normally retains a general rather
than a specific impression of trademarks. In re Jack B. Binion,
93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106 (TTAB 1975).
Applicant contends that the Trademark Examining Attorney
has improperly dissected the mark by not considering the design
element of applicant’s mark and by focusing only on the shared
literal element of “MUZZ-.” Applicant emphasizes the
differences in the spelling of the suffixes of the literal
component “MUZZ-”: “-IE’S” versus “YS.” Applicant also
maintains that “[t]he stylization and unique design of
[a]pplicant’s mark combine to make the mark very feminine in
appearance. In contrast, the cited registrant’s mark uses a
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completely different stylization that is quite masculine in
nature….” Applicant’s Brief, p. 5.
Applicant’s arguments are unconvincing. The difference in
the spelling of MUZZIE’S versus MUZZYS is minor, especially
given that the marks are pronounced in an identical manner. It
is well settled that similarity in sound alone may be sufficient
to support a finding of likelihood of confusion. RE/MAX of Am.,
Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980). As
such, in calling for the respective goods and services of
applicant and registrant, prospective consumers will pronounce
the literal portion of each mark in the same way.
As to the additional design element in applicant’s mark, we
find that in this particular case, it fails to mitigate the
identical sound and nearly identical appearance of the
respective literal portions of the involved marks. Applicant is
reminded of the often-recited principle that when a mark
consists of a literal portion and a design portion, the literal
portion is more likely to be impressed upon a purchaser’s memory
and to be used in calling for the goods and/or services;
therefore, the literal portion is normally accorded greater
weight in determining whether marks are confusingly similar. In
re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999).
See also CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ
198, 200 (Fed. Cir 1983); In re Kysela Pere et Fils, Ltd., 98
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USPQ2d 1261, 1267-68 (TTAB 2011). We also agree with the
Trademark Examining Attorney’s assessment that applicant over-
emphasizes the comparison between the font of applicant’s mark
as “feminine” as compared to registrant’s supposedly more
“masculine” font. Such differences in appearance are
insufficient to overcome the fact that the marks are pronounced
the same. Notwithstanding the above, consumers familiar with
registrant’s more “masculine” styled mark or applicant’s more
“feminine” styled mark may, upon encountering the other, believe
that either applicant or registrant has expanded their business
to include variations of their original marks.
Regarding commercial impression, applicant argues that the
Trademark Examining Attorney “failed to consider one of the
exceptions to the general rule regarding addition or deletion of
terms, or matter, in marks that are being compared, namely the
fact that likelihood of confusion will not be found if such
additions and subtractions create significantly different
commercial impressions between the marks in their entireties.”
Applicant’s Brief, p. 6. Applicant then relies on various cases
where no likelihood of confusion was found due to the addition
of a different word, for example the case of In re Farm Fresh
Catfish Co., 231 USPQ 495 (TTAB 1986)(CATFISH BOBBERS for fish
held not likely to be confused with BOBBER for restaurant
services). Applicant’s Brief, p. 6. Here, however, the only
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distinction in the literal portions of the marks is not the
addition of an entirely different word but rather the plural
form of the word “MUZZY” versus the possessive form of the word
“MUZZIE.” It is obvious that the addition of an entirely
different word to a mark has the potential to change the
commercial impression, particularly where the common wording in
the marks is suggestive, as it was in Farm Fresh Catfish.
However, because this is not the factual circumstance we have
before us, the case law applicant relies upon is inapposite.
Thus, the first du Pont factor weighs in favor of finding a
likelihood of confusion.
Next, we consider the goods, services and channels of
trade. Turning first to a discussion of the involved services,
applicant contends that by amending the recitation of services
from “retail clothing boutiques” to “retail clothing boutiques
featuring young women's evening gowns, cocktail dresses and
evening footwear and accessories, namely, high heel shoes,
evening handbags and evening jewelry,” the now “vastly different
channels of trade” will obviate any likelihood of confusion.
Applicant’s Brief, p. 3.
The fact that applicant restricted its recitation of
services is of no matter. This is because the term “retail
store” in registrant’s recitation of services is sufficiently
broad to encompass applicant’s more particular type of “retail
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clothing boutiques.” Moreover, as recited in registrant’s Class
35 services of “retail store, mail order catalog, direct order
by telephone, and wholesale distributorship featuring motorcycle
parts and clothing manufactured by others,” registrant’s retail
store services are not limited as to the type of clothing sold
or style. Consequently, we must assume that the registration
encompasses all services of the type described, including those
in applicant’s more specific recitation, that the services move
in all normal channels of trade, and that they are available to
all potential customers. It must also be assumed that the same
classes of purchasers shop for these items. See In re Jump
Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). As such, the
trade channels and potential purchasers are legally identical.
Considering now applicant’s retail store services in
relation to registrant’s Class 25 clothing apparel, it is well
established that confusion may be likely to occur from the use
of the same or similar marks on clothing, on the one hand, and
for retail services involving the sale of clothing, on the
other. See, e.g., In re U.S. Shoe Corp., 229 USPQ 707 (TTAB
1985) (CAREER IMAGE (stylized) for retail women's clothing store
services and clothing held likely to be confused with CREST
CAREER IMAGES (stylized) for uniforms). In support thereof, the
Trademark Examining Attorney submitted into the record numerous
copies of use-based, third-party registrations identifying both
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retail store services featuring the sale of clothing as well as
clothing items themselves. See Registration Nos. 2957988,
3330473, 2951537, 3437500, 3027835, and 3411758. Copies of use-
based, third-party registrations may serve to suggest that the
goods are of a type which may emanate from a single source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993).
Applicant attempts to distinguish the goods, arguing that
registrant’s “hats, shirts and jackets” all identify motorcycle
related apparel sold to motorcycle enthusiasts, whereas the
prospective consumers of clothing apparel sold in applicant’s
boutiques are young women seeking formal attire. Applicant’s
Brief, pp. 8-9. To support this argument, applicant relies on
excerpts obtained from registrant’s web site which purport to
show “the vast majority of the services provided are related to
motorcycle parts, hats, shirts and jackets, while a few t-shirts
and a hat advertising the shop are sold.” Applicant’s Brief, p.
8.
Applicant's reliance on extrinsic evidence to narrow the
scope of the registrants' goods is improper. The law is clear
that the question of likelihood of confusion must be determined
based on the identification of goods in the application and
cited registration, regardless of what the record may reveal as
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to the actual nature of the goods, the particular channels of
trade or the class of purchasers to which the goods are
directed. Octocom Systems, Inc. v. Houston Computers Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)(“The
authority is legion that the question of registrability of an
applicant's mark must be decided on the basis of the
identification of goods set forth in the application regardless
of what the record may reveal as to the particular nature of an
applicant's goods, the particular channels of trade or the class
of purchasers to which sales of the goods are directed.”).
Registrant’s clothing apparel in Class 25 is not limited to
motorcycle related clothing or gear. Moreover, the sale of such
items is not limited to motorcycle enthusiasts. We further note
that the same logic applies to registrant’s Class 35 services.
That is to say that the clothing sold in registrant’s retail
services cannot be restricted by extrinsic evidence to
motorcycle related apparel. Thus, these du Pont factors of the
similarity of the goods and services and channels of trade weigh
in favor of finding a likelihood of confusion.
Applicant also raises the argument in its brief that that
its predecessor in interest previously owned a registration for
the same mark for “retail clothing boutiques” which was
inadvertently cancelled due to the failure to file a Section 8
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affidavit.4 Applicant’s Brief, p. 3. Applicant contends that
the marks coexisted on the register for over six years without
any instances of actual confusion. We are not persuaded.
Applicant’s cancelled registration cannot justify registration
of its current application. A cancelled registration is not
entitled to any of the statutory presumptions of Section 7(b) of
the Trademark Act. See In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB
2007); In re Hunter Publishing Company, 204 USPQ 957, 963 (TTAB
1979) (cancellation “destroys the Section [7(b)] presumptions
and makes the question of registrability ‘a new ball game’ which
must be predicated on current thought.”). Further, the
determination of another Trademark Examining Attorney regarding
a previously registered mark is not dispositive of the case
before us. Lastly, we note that we cannot consider the lack of
evidence of confusion in an appeal, to which the cited
registrant is not a party. In re Kangaroos U.S.A., 223 USPQ
1025, 1026-1027 (TTAB 1984).
To the extent that there are any other relevant du Pont
factors, we treat them as neutral. In addition, any doubt
regarding a likelihood of confusion determination is resolved in
favor of the registrant. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).

4 Registration No. 2683444, cancelled September 12, 2009.
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After considering all of the evidence of record and
argument pertaining to the du Pont likelihood of confusion
factors, we conclude that there is a likelihood of confusion
between applicant’s mark and the registered mark when used in
connection with their identified goods and services.
Decision: The Section 2(d) refusal is affirmed.