Next PLCv.Nextec Applications, Inc.

Trademark Trial and Appeal Board

Oct 19, 1999

No. 91102929 (T.T.A.B. Oct. 19, 1999)

Hearing: Paper No. 42
November 4, 1998 PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 19,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Next PLC
v.
Nextec Applications, Inc.
_____
Opposition Nos. 102,929 and 104,583
to application Serial Nos. 74/707,547 and 74/707,526
both filed on July 26, 1995
_____
Paul F. Kilmer and Stephen J. Jeffries of Gadsby & Hannah
LLP for Next PLC.
Elizabeth A. Langworthy, Patricia B. Cunningham and John L.
North of Sutherland, Asbill & Brennan LLP for Nextec
Applications, Inc.
______
Before Hohein, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Nextec Applications, Inc. has filed applications to
register the mark NEXTEC as shown below,
Opposition Nos. 102,929 and 104,583
2
for “silicone-treated fabrics for the following uses: floor
coverings; industrial applications, namely automotive
fabrics, architectural fabrics, awnings, canopies, tents,
tarps, banners, flags, geosynthetic fabrics, marine
products, and protective wear; home textiles, namely,
towels, curtains, draperies, upholstery, and bedding
materials; consumer apparel, namely coats, raincoats,
bathing suits and accessories, jackets, pants, shorts,
skirts, shirts, blouses, underwear, uniforms, gloves and
shoes; and medical and laboratory products, namely gowns,
masks, and gloves,”1 and “material treatment services,
namely silicon fabric coating services to the order or
specification of others.”2
Registration has been opposed by Next PLC, a United
Kingdom corporation. As grounds for opposition, opposer
alleges, in each opposition, that since prior to the filing
date of applicant’s application, opposer has used the mark
NEXT in connection with clothing and accessories, retail
clothing stores, home furnishings, and home textiles; that
it is the owner of Registration No. 1,692,188 (issued June
9, 1992) for the mark NEXT DIRECTORY for “publications;
namely, catalogues featuring clothing, leather goods and

1 Serial No. 74/707,526 filed July 26, 1995 under Section 1(b) of
the Trademark Act.
2 Serial No. 74/707,547 filed July 26, 1995 under Section 1(b) of
the Trademark Act.
Opposition Nos. 102,929 and 104,583
3
accessories and mail order catalogue services featuring
clothing, leather goods and accessories;” and that
applicant’s mark NEXTEC and design so resembles opposer’s
previously used and registered marks as to be likely to
cause confusion, mistake or deception.
Applicant, in its answers, denied the salient
allegations of likelihood of confusion.3
The record consists of the pleadings; the parties’
stipulated evidence (with exhibits)4; and notices of
reliance filed by both parties.
Both parties filed briefs on the case and were
represented by counsel at the oral hearing.
The record shows that opposer is a source and retailer
of men’s, women’s, children’s and infant’s wearing apparel,
footwear and accessories, jewelry, fragrances and bedding
articles, such as bedspreads, covers and quilts. Opposer
sells its products by mail order catalogues and in its own
retail stores. Opposer began selling wearing apparel in the
United States through catalogs around January 1991 and
opened its first retail apparel and accessories store in the
United States in Boston, Massachusetts in September 1993.
Opposer currently operates five U.S. retail stores and has
expanded its line of products to include jewelry, fragrances

3 We note that the oppositions were consolidated by the Board in
an order dated April 29, 1997.
Opposition Nos. 102,929 and 104,583
4
and bedding articles. Opposer advertises and promotes its
merchandise through newspaper advertising and in-store
displays. Opposer’s sales of its products have totaled over
$20 million and its advertising expenses over $1.5 million.5
Applicant is a specialty finisher of fabrics for use in
apparel, medical, household, marine and industrial
applications. Applicant applies a silicone encapsulation
process to a variety of textile materials. Applicant
promotes its material treatment services and its treated
fabrics by distributing brochures at trade shows.6
Inasmuch as the parties have stipulated that opposer is
the owner of pleaded Registration No. 1,692,188 as well as
five additional registrations set forth below, there is no
issue with respect to opposer’s priority. See King Candy
Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). The five registrations are:
Registration No. 1,766,454 for the mark NEXT DIRECTORY for
“leather goods; namely wallets and hand bags, clothing,
namely blouses, sweaters, jumpers, dresses, shirts,

4 The parties agreed to submit evidence in this manner in lieu of
taking testimony.
5 Opposer’s annual sales and advertising figures have been made
of record under seal. While this kind of evidence is properly
deemed confidential, we note that the parties marked a
significant portion of the evidence in this case confidential,
much of which the Board otherwise would not consider to be
confidential.
6 Although the involved applications were filed under the intent-
to-use provisions of the Trademark Act, it appears that applicant
has begun to use the involved mark.
Opposition Nos. 102,929 and 104,583
5
swimwear, lingerie, belts and shoes”; Registration No.
2,095,429 for the mark NEXT for “men’s, women’s and
Opposition Nos. 102,929 and 104,583
6
children’s clothing, namely shirts, jumpers, cardigans,
pants, jeans, suits, ties, socks, shorts, underwear,
scarves, gloves, coats, jackets, pajamas, dresses, blouses,
skirts, leggings, sweaters, tights, stockings, bras, slips,
body stockings, night gowns, dressing gowns, boots, shoes,
belts, hats, t-shirts, coveralls, jumpsuits, jogging pants,
sweatshirts, and waistcoats; retail store services in the
field of clothing, footwear, jewelry, cosmetics and
accessories”; Registration No. 2,074,798 for the mark NEXT
for “clothing, namely blouses, sweaters, jumpers, dresses,
shirts, swimwear, lingerie, belts and shoes”; Registration
No. 2,077,785 for the mark NEXT INTERIORS for “bedspreads,
duvet covers, pillow cases, sheets, quilts and duvets”; and
Registration No. 2,116,498 for the mark NEXT BOYS & GIRLS
for “children’s clothing, namely dresses, shirts, blouses,
skirts, t-shirts, short, leggings, suspenders, shoes, socks,
tights, cardigans, jumpers, hats, coveralls, jumpsuits,
scarves, gloves, jogging pants, sweatshirts, coats,
waistcoats, jackets, pajamas and dressing gowns.”7
We turn then to the issue of likelihood of confusion.
Our determination of likelihood of confusion under Section
2(d) of the Trademark Act must be based on an analysis of

7 Although opposer did not plead ownership of these five
registrations in the notices of opposition, we deem the
opposition pleadings to be amended under Fed. R. Civ. P. 15(b) to
include such registrations, in view of the parties’ stipulation.
Opposition Nos. 102,929 and 104,583
7
all of the probative facts in evidence that are relevant to
the factors bearing on the issue of likelihood of confusion.
In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
We turn first to a consideration of the parties’
respective goods and services. We note, in this regard,
that the parties, in their briefs, have focused on a
comparison of opposer’s wearing apparel and bedding
articles, i.e., bedspreads, covers and quilts, and
applicant’s silicone-treated fabrics for use in the
manufacture of consumer apparel and home textiles, i.e.,
bedding materials. We would agree that these are the most
pertinent of the parties’ goods/services.
With respect to these goods, it is obvious that
applicant’s silicone-treated fabric is to be used in the
manufacture of the very goods which opposer markets. Also,
the record shows that manufacturers of wearing apparel and
home textiles often practice “co-branding.” That is, the
finished wearing apparel or home textile item bears the mark
of the manufacturer as well as the mark of the fabric
utilized in the manufacture of the item. Under the
circumstances, we find that opposer’s wearing apparel and
bedding articles, on the one hand, and applicant’s silicone-
treated fabric for use in the manufacture of consumer
apparel and bedding materials, on the other hand, are
Opposition Nos. 102,929 and 104,583
8
closely related goods. See Dan River, Inc. v. Apparel
Unlimited Inc., 226 USPQ 186 (TTAB 1985) and cases cited
therein.
This case turns, therefore, on a comparison of the
marks. The most pertinent of opposer’s marks is NEXT.
Because the word portion of applicant’s mark, NEXTEC,
encompasses opposer’s mark NEXT, there are consequent
similarities in appearance and sound. Nonetheless, we agree
with applicant that the marks have quite different
commercial impressions. As applicant points out, NEXT is a
recognized word, whereas NEXTEC is a coined term. Contrary
to opposer’s argument, we do not believe that purchasers
would perceive NEXTEC as a “simple contraction” of NEXT.
Rather, when applied to silicone-treated fabric, NEXTEC
suggests “high tech” fabric. Also, in comparing the marks,
we cannot overlook the stylized “X” and fabric swatch design
in applicant’s mark. These elements aid in distinguishing
applicant’s NEXTEC and design mark from opposer’s NEXT mark.
In sum, the differences between the marks in commercial
impression clearly outweigh any similarities in appearance
and sound.
We find, therefore, that the marks are not so similar
that, when used on wearing apparel and bedding articles, on
the one hand, and silicone-treated fabrics for use in the
manufacture of consumer apparel and bedding materials, on
Opposition Nos. 102,929 and 104,583
9
the other hand, confusion is likely. Compare: Dan River,
Inc., supra [The marks DAN for fabric and DAN’ELLE for
clothing create similar commercial impressions such that
confusion is likely].
Several other matters require comment. Although
opposer argues that its NEXT mark is entitled to “an
expansive scope of protection over a wide range of related
products and services” (Brief, p. 28), the evidence falls
short of establishing the fame of opposer’s mark. While it
appears that opposer has enjoyed some success with its
products, we cannot conclude, based on the present record,
that its mark has become famous. Compare: Kenner Parker
Toys v. Rose Art Industries, 963 F.2d 350, 22 USPQ2d 1453,
1456 (Fed. Cir. 1992).
On the other hand, in reaching our decision, we have
given little weight to applicant’s argument that opposer’s
NEXT mark is weak and, therefore, entitled to a limited
scope of protection. In support of this argument, applicant
submitted a list of retail clothing and/or shoe stores with
NEXT in their names; labels and hang tags from the garments
of three manufacturers bearing marks which include the term
NEXT; and over twenty third-party registrations for marks
which include the term NEXT for clothing. As to the third-
party registrations, they are entitled to little weight on
the question of likelihood of confusion. In re Hub
Opposition Nos. 102,929 and 104,583
10
Distributing, Inc., 218 USPQ 284 (TTAB 1983). Third-party
registrations are not evidence of what happens in the
marketplace or that the public is familiar with the use of
the marks listed therein. National Aeronautics and Space
Administration v. Record Chemical Co., 185 USPQ 563 (TTAB
1975). As to the list of retail clothing and/or shoe
stores, this is not particularly probative on the issue of
likelihood of confusion with respect to the particular goods
involved herein. We are left, then, with three instances of
actual third-party use of marks which include the term NEXT
for goods of the type involved herein, which is certainly
not a substantial number.
Finally, the fact that there have been no instances of
actual confusion has been given no weight in view of the
lack of evidence concerning the level and scope of
distribution and sales of applicant’s fabrics, and therefore
the opportunity for possible confusion.
Opposition Nos. 102,929 and 104,583
11
Decision: The oppositions are dismissed.
G. D. Hohein
P. T. Hairston
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board