Psychographics Design Group, Inc.

Trademark Trial and Appeal Board

Jun 29, 1999

No. 75212309 (T.T.A.B. Jun. 29, 1999)

Paper No. 10
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 29, 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 The Psychographics Design Group, Inc.
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Serial No. 75/212,309
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Bart A. Lazar of Seyfarth, Shaw, Fairweather & Geraldson
for The Psychographics Design Group, Inc.
LaVerne T. Thompson, Trademark Examining Attorney, Law
Office 109 (Ronald R. Sussman, Managing Attorney)
_______
Before Chapman, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
The Psychographics Design Group, Inc. has filed an
application to register the mark SUNDAY STATE OF MIND for
“clothing, namely, t-shirts, polo shirts, crew neck shirts,
football jerseys, pullover shirts, v-neck shirts, dress
shirts, hooded shirts, sweatshirts, hooded sweatshirts,
jackets, hooded jackets, anoraks, coats, dresses, t-shirt
Ser. No. 75/212309
2
dresses, skirts, sweaters, sweatpants, tank tops, pants,
overalls, shorts and scarves.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
two prior registrations issued to the same entity--(1) the
mark A STATE OF MIND2, and (2) the mark “A PENNSYLVANIA
STATE OF MIND,”3 both for “clothing, namely caps, shirts,
jackets and sweaters.”
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
We affirm the refusal to register as to the mark A
STATE OF MIND (Reg. No. 1,762,103) only. In reaching this
conclusion, we have considered all of the relevant du Pont4
factors in relation to both cited registrations.
We turn first to a consideration of applicant’s goods
vis-a-vis the goods in both cited registrations. We find
that the involved goods are essentially identical and/or

1 Application Serial No. 75/212,309, filed December 12, 1996,
based on applicant’s claimed dates of first use and first use in
commerce of January 19, 1994.
2 Reg. No. 1,762,103, issued March 30, 1993, Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The claimed date of
first use and first use in commerce is December 1, 1992.
3 Reg. No. 1,723,894, issued October 13, 1992, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use and first use in commerce is February
1988. The term “Pennsylvania” is disclaimed. The mark as
registered includes quotation marks.
4 See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973).
Ser. No. 75/212309
3
closely related products. Applicant did not argue to the
contrary.
Likewise applicant did not argue, and we do not find,
any differences in the channels of trade or purchasers. We
must presume, given the identifications, that the goods
travel in the same channels of trade, and are purchased by
the same class of purchasers. See Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987).
Turning now to the cited registered mark “A
PENNSYLVANIA STATE OF MIND” (Reg. No. 1,723,894), we find
that the connotations and commercial impressions created by
this mark and by applicant’s mark SUNDAY STATE OF MIND are
entirely distinct. Specifically, applicant’s mark most
likely would connote a day of leisure and recreation or a
day at church, whereas the registrant’s mark connotes
something made in or in some way connected with the
Commonwealth of Pennsylvania. Based on the record before
us, we conclude that applicant’s mark (SUNDAY STATE OF
MIND) and the mark in cited Registration No. 1,723,894 (“A
PENNSYLVANIA STATE OF MIND”) are not sufficiently similar
that consumers are likely to assume a common source when
the goods are sold under these marks.
Ser. No. 75/212309
4
Turning next to the refusal to register based on the
mark A STATE OF MIND (Reg. No. 1,762,103), we find that the
marks SUNDAY STATE OF MIND and A STATE OF MIND are similar
in sound and connotation. The commercial impression
created by these marks is substantially similar, both
relating to a thought process or state of mind. That is,
both marks refer to a mental outlook, although only
applicant’s mark specifically refers to Sunday, connoting a
day of recreation (casual clothing) or a day for church
(more dressed-up attire). See The Wella Corporation v.
California Concept Corporation, 558 F.2d 1019, 194 USPQ 419
(CCPA 1977); and In re South Bend Toy Manufacturing
Company, Inc., 218 USPQ 479 (TTAB 1983).
Of course, purchasers will be aware of the word SUNDAY
in applicant’s mark, but they may assume that SUNDAY STATE
OF MIND is just a variant of registrant’s A STATE OF MIND
mark, which is being used to identify a new line of
clothing consisting of casual wear for recreational
activities on Sunday, or a line of more dressed-up clothing
for a day at church on Sunday. That is, even if purchasers
realize that applicant’s mark is different from
registrant’s mark, they may believe that applicant’s mark
is a new line of products sold under registrant’s mark.
Purchasers are likely to assume that applicant’s goods come
Ser. No. 75/212309
5
from the same source as registrant’s goods or are in some
way sponsored by or associated with registrant. See Henry
Siegel Co. v. M & R International Mfg. Co., 4 USPQ2d 1154
(TTAB 1987); and Piccolo Sportswear, Inc. v. Mast
Industries, Inc., 227 USPQ 710 (TTAB 1985).
Applicant’s argument that it owns a registration for
the mark A MONTH OF SUNDAYS is not relevant to the issue of
likelihood of confusion between applicant’s applied-for
mark and the cited registered marks because applicant
cannot rely upon a family of marks in seeking registration
of this particular mark. See In re U.S. Plywood-Champion
Papers, Inc., 175 USPQ 445 (TTAB 1972). See also, Baroid
Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d
1048 (TTAB 1992).
Finally, 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. Society for Human Resource Management, 27
USPQ2d 1423, at 1440 (TTAB 1993).
Decision: The refusal to register under Section 2(d)
is reversed as to Registration No. 1,723,894 (“A
PENNSYLVANIA STATE OF MIND”), and the refusal to register
Ser. No. 75/212309
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is affirmed as to Registration No. 1,762,103 (A STATE OF
MIND).
B. A. Chapman
H. R. Wendel
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board