New York Fragrance, Inc.

Trademark Trial and Appeal Board

Aug 17, 1999

No. 75194506 (T.T.A.B. Aug. 17, 1999)

Hearing: Paper No. 14
January 6, 1999 JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 18, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re New York Fragrance, Inc.
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Serial No. 75/194,506
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Sam P. Israel for applicant.
Geoffrey M. McNutt, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
_______
Before Quinn, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by New York Fragrance,
Inc. to register the mark AMERICAN EAGLE for “perfumes,
colognes, shampoos, body powder, toilet water, hair
conditioner, after shave lotion, [and] shaving cream.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the

Ser No. 75/194,506
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basis that applicant’s mark, if applied to applicant’s
goods, would so resemble the previously registered AMERICAN
EAGLE OUTLET and AMERICAN EAGLE OUTFITTERS marks, owned by
a single entity, for a variety of goods and services, as to
be likely to cause confusion. The cited marks are as
follows: AMERICAN EAGLE OUTLET for discount store services
in the field of clothing, footwear and accessories;2 and
AMERICAN EAGLE OUTFITTERS for clothing, namely coats,
vests, parkas, anoraks, pants, jeans, shorts, sweaters,
shirts, underwear, neckwear, headwear, belts, hoisery,
skirts, jackets, blazers, and fleecewear; footwear,
slippers, leather and rubber boots and insoles; leather
care products; necklaces, earrings, and wristwatches; and
stationery, calendars, compasses and flashlights.3

1 Application Serial No. 75/194,506, filed November 7, 1996,
alleging a bona fide intention to use the mark in commerce.
2 Registration No. 2,031,388. The word “Outlet” is disclaimed.
3 Registration Nos. 2,086,693, 2,050,115, 1,921,343, 1,916,360
and 1,597,199. The word “Outfitters” is disclaimed, and in two
of the registrations, the word “American” also is disclaimed.
Ser No. 75/194,506
3
When the refusal was made twice,4 applicant appealed.5
Applicant and the Examining Attorney submitted briefs,6 and
both appeared at an oral hearing before the Board.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are

4 Applicant has argued for reversal based, in part, on the fact
that the Examining Attorney, after essentially withdrawing the
Section 2(d) refusal, reinstated same. A review of the file
shows that the reinstatement of the refusal was made a mere
eleven days after the Examining Attorney’s self-confessed
“inadvertent error.” Although this portion of the examination
undoubtedly is regretted, it hardly warrants reversal of the
refusal.
5 After refusing registration on the bases of registrant’s
previously issued registrations, the Examining Attorney suspended
further action pending the disposition of one of registrant’s
pending applications. When the underlying application matured
into Registration No. 2,086,693, the Examining Attorney, in a
non-final Office action dated November 21, 1997, refused
registration based on the recently issued registration for the
first time. Applicant then filed its appeal. While this appeal
technically was premature inasmuch as the refusal based on
Registration No. 2,086,693 was raised only one time, the Board
went ahead and instituted the appeal. Inasmuch as this specific
Section 2(d) refusal is substantially similar to the earlier
refusals, and since applicant’s brief fully addresses all of the
refusals, it is in the interests of judicial economy to decide
the appeal at this time.
6 Both applicant and the Examining Attorney submitted additional
evidence with their appeal briefs. More specifically, applicant
submitted a second declaration of its president, and a computer
printout which includes third-party registrations of AMERICAN
EAGLE marks. The Examining Attorney submitted excerpts retrieved
from the NEXIS database which, according to the Examining
Attorney, bear on the renown of registrant in the retail trade.
Suffice it to say that the evidence, which was not timely
introduced during the prosecution of the application, does not
form part of the record on appeal. Trademark Rule 2.142(d).
Accordingly, we have not considered any of the newly submitted
evidence in reaching our decision. We hasten to add that, even
if any or all of the evidence were considered, we would reach the
same result on the likelihood of confusion issue.
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relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. Federated Food, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Turning our consideration to applicant’s mark AMERICAN
EAGLE and registrant’s mark AMERICAN EAGLE OUTFITTERS and
AMERICAN EAGLE OUTLET, we agree with the Examining Attorney
that they are substantially similar in sound, appearance
and meaning. Applicant’s attempts to distinguish its mark
from the marks of registrant, which include OUTLET or
OUTFITTERS, simply fall far short. Applicant contends that
the presence of these terms gives registrant’s marks “a
distinctive outdoors and non-prestige (“outlet”) quality,
thereby differing measurably from that intended by
[applicant] in terms of the overall impression imparted to
consumers.” Applicant’s president, Rama Krishna Cherukuri,
has weighed in with his declaration wherein he essentially
states that the marks are not likely to cause confusion in
the marketplace.
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Registrant’s mark clearly is dominated by the words
AMERICAN EAGLE which are identical to the entirety of the
mark sought to be registered by applicant. Although we
have considered the marks in their entireties, “there is
nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided [that] the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). For example, “that a particular feature is
descriptive or generic with respect to the involved goods
or services is one commonly accepted rationale for giving
less weight to a portion of a mark...” Id. at 751.
In the case at hand, the disclaimed words “OUTFITTERS”
and “OUTLET” clearly are subordinate to the words “AMERICAN
EAGLE.” Moreover, the words “AMERICAN EAGLE” alone would
likely be used in calling for registrant’s goods and
services. In any event, it is the general overall
commercial impression engendered by the marks which must
determine, due to the fallibility of memory and the
consequent lack of perfect recall, whether confusion as to
source or sponsorship is likely. The proper emphasis is
thus on the recollection of the average purchaser, who
normally retains a general rather than a specific
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impression of trademarks or service marks. See: In re
United States Distributors, Inc., 229 USPQ 237, 239 (TTAB
1986). Further, the record is devoid of evidence of any
third-party uses or registrations of the same or similar
marks for similar types of goods and services to those
involved here.
With respect to the similarity between applicant’s
goods and registrant’s goods and services, at the outset,
it should be noted that it is not necessary that the goods
and/or services be identical or even competitive in nature
in order to support a finding of likelihood of confusion.
It is sufficient that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons under circumstances that
would give rise, because of the marks used in connection
therewith, to the mistaken belief that the goods and/or
services originate from or are in some way associated with
the same source. In re International Telephone and
Telegraph Corp., 197 USPQ 910 (TTAB 1978). Moreover, the
Board has stated that the degree of similarity in the
goods/services need not be as great where the marks are
essentially identical. Warnaco Inc. v. Adventure Knits,
Inc., 210 USPQ 307, 315 (TTAB 1981).
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In the present case, we find that applicant’s goods
are sufficiently related to registrant’s goods and services
that, when marketed under substantially similar marks,
consumers are likely to be confused. The Board is hardly
breaking new ground in finding that clothing and
cosmetics/personal care products are related for purposes
of a likelihood of confusion analysis. See, e.g., The All
England Lawn Tennis Club (Wimbledon) Limited v. Creations
Aromatiques, Inc., 220 USPQ 1069 (TTAB 1983); In re
Barbizon International, Inc., 217 USPQ 735 (TTAB 1983); In
re Arthur Holland, Inc., 192 USPQ 494 (TTAB 1976); and S.
Rudofker’s Sons, Inc. v. “42” Products, Ltd., Inc., 161
USPQ 499 (TTAB 1969). The goods would be sold in the same
types of stores to the same classes of purchasers.
In finding that applicant’s goods are related to
registrant’s goods and services involving the sale of those
goods, we have considered the several third-party
registrations based on actual use in this country which the
Examining Attorney has submitted. The registrations show
marks such as BANANA REPUBLIC, GAP, EDDIE BAUER,
ABERCROMBIE FITCH, BENETTON and VICTORIA’S SECRET which, in
each instance, are registered for both the types of goods
and services marketed by applicant and by registrant.
Although these registrations are not evidence that the
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different marks shown therein are in use or that the public
is familiar with them, they nevertheless have probative
value to the extent that they serve to suggest that the
goods and services listed therein are of a kind which may
emanate from a single source. See, e.g., In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
at n. 6 (TTAB 1988).
In connection with this point, we particularly note
that registrant itself has shown a desire to follow the
lead of others in the field in extending its brand to cover
the types of goods listed in the involved application. As
highlighted by the Examining Attorney, registrant owns two
pending applications (currently suspended to await the
disposition of this appeal) to register the mark AMERICAN
EAGLE OUTFITTERS for hair and body shampoo, soap,
moisturizing body lotion, bath salts, shower gel, and
perfume.7
Finally, to the extent that any of the points raised
by applicant may cast doubt on our ultimate conclusion on
the issue of likelihood of confusion, we resolve that
doubt, as we must, in favor of the prior registrant. In re

7 Application Serial Nos. 75/211,730 and 75/367,707.
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Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); and In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
We conclude that consumers familiar with registrant’s
clothing, footwear, and jewelry sold under the mark
AMERICAN EAGLE OUTFITTERS, and discount store services
rendered under the mark AMERICAN EAGLE OUTLET would be
likely to believe, upon encountering applicant’s mark
AMERICAN EAGLE for perfumes, colognes, shampoos, hair
conditioners and the like, that the goods and/or services
originated with or were somehow associated with or
sponsored by the same entity.
Decision: The refusal to register is affirmed.
T. J. Quinn
H. R. Wendel
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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