Patricia A. Towers

Trademark Trial and Appeal Board

Mar 8, 1999

No. 75152673 (T.T.A.B. Mar. 8, 1999)

Paper No. 9
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 8, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Patricia A. Towers
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Serial No. 75/152,673
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Stephen M. Evans of Graybeal Jackson Haley LLP for Patricia
A. Towers
Kim Saito, Trademark Examining Attorney, Law Office 109
(Deborah S. Cohn, Managing Attorney)
_______
Before Simms, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Patricia A. Towers has filed an intent-to-use
application to register the mark shown below
Ser. No. 75/152673
2
for “clothing, namely, tee shirts, tank tops, sweat shirts,
sweat pants, shorts, caps, hats, golf shirts, jackets,
boxer shorts, jeans, underwear, swim suits, pants, shirts,
dresses, skirts, blouses, head bands, wrist bands, visors,
aprons, bandannas, belts, overalls, coveralls, socks,
vests, scarves, turtleneck shirts, singlets, sports shirts,
trousers, track suits, knitwear shirts, bodysuits, hosiery,
jumpers, leotards, sweaters, jerseys, and gloves.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, if applied to her identified
goods, would so resemble the registered mark owned by
Craddock-Terry Shoe Corporation and shown below
for “leather shoes,”2 as to be likely to cause confusion.3

1 Application Serial No. 75/152,673, filed August 19, 1996. The
application is based on applicant’s alleged bona fide intention
to use the mark in commerce.
2 Registration No. 371,821, issued October 10, 1939, republished
under Section 12(c) of the Trademark Act of 1946, Section 8
affidavit accepted, Section 15 affidavit acknowledged, second
renewal. The claimed date of first use is June 1, 1915.
3 The Examining Attorney also made the requirement for a
disclaimer of the term “clothes” final. In applicant’s brief on
the case, applicant offered a disclaimer of the term “clothes”,
thus rendering the appeal on this requirement moot. Should
applicant ultimately prevail in this appeal, the application
shall be returned to the Examining Attorney for entry of the
disclaimer.
Ser. No. 75/152673
3
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested. We affirm the refusal to register.
The Examining Attorney essentially takes the position
that the word LIFELINE is the dominant portion of both the
cited registered mark and applicant’s composite mark; that
applicant has adopted registrant’s entire word mark as a
portion of applicant’s mark; that the marks create similar
commercial impressions; that the respective goods are
closely related; and that the goods are sold to the same
general purchasers through the same channels of trade.
Applicant contends that the marks must be considered
in their entireties and registrant’s mark is the word
LIFELINE presented in stylized form, whereas applicant’s
mark is a composite mark consisting of a globe design with
the word LIFE LINE written in a special form representing
“a heart beat trace” (applicant’s brief, p. 10) with the
words CLOTHES FOR LIVING appearing in smaller type in a
semi-circle under the bottom half of the globe design.
Applicant also argues that while “in the abstract, shoes
and clothing are types of apparel,” nonetheless the “nature
of shoes is radically different than the nature of clothes”
(applicant’s brief, p. 11); that registrant appears to make
only shoes and to sell its private-label shoes through
Ser. No. 75/152673
4
telephone mail order, shoe stores, and retail mass
merchandise stores, and although applicant’s channels of
trade are not yet certain, she would not sell clothing in
shoes-only stores; and that the mark LIFELINE or LIFE LINE
(or variants thereof) is “highly diluted” but “use of this
mark in conjunction with clothing is essentially non-
existent” (applicant’s brief, p. 13).
Preliminarily we will address the issue of the
Examining Attorney’s objection to one of applicant’s
exhibits in this case. Applicant submitted three exhibits
attached to its May 23, 1997 response to the first Office
action. Exhibit A is a printout of the results of a
commercial search of the cited registrant’s name offered to
indicate that registrant has not expanded outside the
business of leather shoes. Exhibit B is the declaration of
Esme S. Bauxar, an employee of applicant’s law firm,
offered as “market research to determine the extent and
manner of registrant’s sales” (applicant’s May 23, 1997
response, p. 2). Exhibit C is a copy of the results of
“applicant’s initial screening search” offered to show the
weakness of the term LIFE LINE or LIFELINE. The Examining
Attorney did not object to applicant’s Exhibit C in the
final Office action dated June 20, 1997. The Examining
Attorney did object to this evidence in the brief on appeal
Ser. No. 75/152673
5
(p. 5) on the basis that the third-party registrations were
not in the appropriate format to be properly of record. It
is inappropriate for the Examining Attorney to ignore the
evidence and then later object thereto, because applicant
could have cured the defect if the objection had been
timely raised by the Examining Attorney. That is, the
Examining Attorney cannot now object to applicant’s Exhibit
C. Accordingly, we will deem this objection to have been
waived. As to the evidence itself, mere lists of
registrations (typed out or the printout of the results of
a search service) are not sufficient to make them of
record. See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB
1992); and In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
Applicant’s Exhibit C (the results of applicant’s “initial
screening search”) is of little, if any, probative value
because the parameters of the search are stated as “U.S.
federal, state, and Canada”; the printout of applicant’s
initial search results does not set forth the involved
goods or services in the listed registrations, but rather
lists only the class numbers; and many of the registrations
are for goods and services in clearly unrelated classes.
Further, we note that applicant made the inconsistent
arguments that the mark LIFE LINE (or LIFELINE or variants)
is a weak, diluted mark, and that there are virtually no
Ser. No. 75/152673
6
other registrations for this mark in the clothing field.
Whether a term is a weak mark must be determined in the
context of the particular line or field of merchandise in
connection with which the mark is used. See In re Bayuk
Cigars Incorporated, 197 USPQ 627 (TTAB 1977). Thus, while
a term may be weak or commonly used in one field, the same
word may be unique and possess strong trademark
significance in another field. Here applicant asserts
that, with the exception of the cited registrant’s mark for
leather shoes, there are no registrations of the marks LIFE
LINE or LIFELINE (or variants thereof) in the clothing
field. Applicant has essentially contended that the mark
is strong in the field of clothing and shoes.
Turning to a consideration of the respective goods,
the Examining Attorney has made of record copies of pages
from four catalogs (Tweeds, J. Crew, Talbots, and Laura
Ashley) showing that leather shoes and various clothing
items are offered under the same mark by the same entity.
In addition, the Examining Attorney submitted three third-
party registrations which issued on the basis of use in
commerce, to demonstrate the close relationship between
leather shoes and various clothing items, by showing that a
single entity has registered a single mark for both leather
shoes and various clothing items.
Ser. No. 75/152673
7
Third-party registrations, however, are not evidence
of commercial use of the marks shown therein, or that the
public is familiar with them. Nevertheless, third-party
registrations which individually cover a number of
different items and which are based on use in commerce4 have
some probative value to the extent they suggest that the
listed goods emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, footnote 6 (TTAB 1988).
Moreover, it is well settled that goods need not be
identical or even competitive to support a finding of
likelihood of confusion; it being sufficient that the goods
are related in some manner or that the circumstances
surrounding their marketing are such that they would likely
be encountered by the same persons under circumstances that
could give rise to the mistaken belief that they emanate
from or are associated with the same source. See Monsanto
Co. v. Enviro-Chem Corp., 199 USPQ 590, 596 (TTAB 1978);
and In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992).
Based on the record before us, we readily conclude

4 The other third-party registrations offered by the Examining
Attorney were based on foreign registrations and we did not
consider those in reaching our decision.
Ser. No. 75/152673
8
that applicant’s goods, a variety of clothing items, are
closely related to the cited registrant’s “leather shoes.”
See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23
USPQ2d 1945 (Fed. Cir. 1992) (Court affirmed Board holding
of likelihood of confusion between KangaROOS and a kangaroo
design for clothing, namely, athletic shoes, sweatsuits and
athletic shirts and KANGOL and a kangaroo design for golf
shirts having collars); In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991) (ESSENTIALS in stylized form for women’s
shoes against ESSENTIALS for women’s clothing, namely,
pants, blouses, shorts, and jackets); and In re Apparel
Ventures, Inc. 229 USPQ 225 (TTAB 1986) (SPARKS BY
SASSAFRAS in stylized form for women’s separates, namely
blouses, skirts and sweaters against SPARKS in stylized
form for shoes, boots and slippers).
Regarding the respective trade channels and
purchasers, applicant’s speculation on registrant’s trade
channels is irrelevant since the goods are broadly
identified in the registration. The Board must determine
the issue of likelihood of confusion on the basis of the
goods as identified in the application and the
registration. See Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987). There are no restrictions as
Ser. No. 75/152673
9
to trade channels or purchasers in either the application
or the cited registration. Thus, the Board must consider
that the parties’ respective goods could be offered and
sold to the same class of purchasers through all normal
channels of trade. See In re Smith and Mehaffey, 31 USPQ2d
1531 (TTAB 1994); and In re Elbaum, 211 USPQ 639 (TTAB
1981).
Turning next to a consideration of the respective
marks, the word portion of a mark, i.e., the portion
utilized in calling for the goods, is most likely to be
impressed in the purchaser’s memory and to serve as the
indication of origin. See Consumers Building Marts, Inc.
v. Mr. Panel, Inc., 196 USPQ 510 (TTAB 1977). In this
case, both applicant’s mark, and registrant’s mark include
the identical wording, LIFE LINE or LIFELINE. The only
portion of either mark that can be spoken is LIFELINE and
LIFE LINE CLOTHES FOR LIVING. The words LIFELINE and LIFE
LINE are the dominant feature of each mark, and there is no
evidence that the words are other than arbitrary in
connection with the respective goods. Registrant’s mark
has been registered for sixty years, and a purchaser
familiar with registrant’s goods sold under the registered
mark may, upon seeing applicant’s mark on closely related
goods, assume that applicant’s goods come from the same
Ser. No. 75/152673
10
source as registrant’s goods. Moreover, the differences in
the marks may not be recalled by purchasers seeing the
marks at separate times. The emphasis in determining
likelihood of confusion is not on a side-by-side comparison
of the marks, but rather must be on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of the many trademarks
encountered; that is, the purchaser’s fallibility of memory
over a period of time must also be kept in mind. See
Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); Mucky Duck Mustard Co.,
supra; and Edison Brothers Stores v. Brutting E.B. Sport-
International, 230 USPQ 530 (TTAB 1986).
To the extent that purchasers notice the differences
in the marks, they may believe that applicant’s mark is a
revised version of registrant’s mark, now used on items of
clothing. Thus, we find that the marks are substantially
similar.
Any doubt on the question of likelihood of confusion
must be resolved against the newcomer as the newcomer has
the opportunity of avoiding confusion, and is obligated to
do so. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988); and Hilson Research Inc. v.
Ser. No. 75/152673
11
Society for Human Resource Management, 27 USPQ2d 1423, at
1440 (TTAB 1993).
Based on the identity of the wording LIFE LINE and
LIFELINE, the close relationship of the goods, and the
similarity of the trade channels, we find that there is a
likelihood that the purchasing public would be confused if
applicant were to use LIFE LINE and design as a mark for
various clothing items. See In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Decision: The refusal to register under Section 2(d)
is affirmed.
R. L. Simms
C. E. Walters
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board