QVC, Inc.

Trademark Trial and Appeal Board

May 7, 1999

No. 75111554 (T.T.A.B. May. 7, 1999)

Paper No. 17
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 7,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re QVC, Inc.
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Serial No. 75/111,554
_______
Manny D. Pokotilow of Caesar, Rivise, Bernstein, Cohen, et
al. for QVC, Inc.
Steven R. Foster, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney)
_______
Before Seeherman, Hanak and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
QVC, Inc. has appealed from the final refusal of the
Trademark Examining Attorney to register FREESTYLE as a
trademark for "sportswear; namely, skirts, blouses, pants,
shirts, jackets, vests, shorts and anoraks sold through
home shopping services through the use of television."1

1 Application Serial No. 75/111,554, filed May 29, 1996, and
asserting first use and first use in commerce on May 2, 1994.
Ser. No. 75/111,554
2
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the mark FREESTYLE,
registered for "fabrics in the piece composed of man-made
fibers, and fabrics in the piece, composed of blends of
cotton fibers and man-made fibers,"2 that, when used on
applicant’s identified goods, is likely to cause confusion
or mistake or to deceive.
The appeal has been fully briefed, but an oral hearing
was not held.3
Both applicant’s and the registrant’s marks are the
identical word, FREESTYLE. As the Examining Attorney has
pointed out, when marks are identical the relationship
between the goods of the respective parties need not be as
close to support a finding of likelihood of confusion.
Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB
1981). See also, In re Concordia International Forwarding
Corp., 222 USPQ 355, 356 (TTAB 1983) ("the greater the
degree of similarity in the marks, the lesser the degree of
similarity that is required of the products or services on

2 Registration No. 960,992, issued June 12, 1973; renewed.
3 Applicant had originally requested an oral hearing, but
subsequently withdrew the request.
Ser. No. 75/111,554
3
which they are being used in order to support a holding of
likelihood of confusion").
Turning to the relationship between the goods, the
registrant’s goods are fabrics in the piece, composed of
man-made fibers or a blend of cotton and man-made fibers,
while applicant’s goods are a variety of sportswear items.
Obviously fabrics and clothing bear an intimate
relationship, in that clothing is made of fabric. Further,
the Examining Attorney has submitted evidence which shows
that fabric marks are used on labels for clothing, and also
that the mark for the fabric used appears in advertisements
for the finished clothing. In addition, the Examining
Attorney has made of record numerous third-party
registrations which show that a single entity has adopted a
particular mark for both fabric and for clothing. Although
applicant is correct that third-party registrations are not
evidence that the public is familiar with the use of the
marks shown therein, nevertheless third-party registrations
which individually cover a number of different items and
which are based on use in commerce serve to suggest that
the listed goods and/or services are of a type which may
emanate from a single source. In re Albert Trostel & Sons
Co.¸29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467 (TTAB 1988). The third-party
Ser. No. 75/111,554
4
registrations submitted by the Examining Attorney, all of
which are based on use in commerce, thus indicate that a
single source may use the same mark for both fabric and
clothing.
Moreover, the Examining Attorney has cited, at page 3
of his brief, a number of ex parte cases decided by both
this Board and the predecessor of our primary reviewing
Court in which fabric and clothing have been found to be
related goods. See, for example, In re Mangel Stores
Corp., 165 USPQ 22 (TTAB 1970) (PRESSCOTT for sweaters,
sport and dress shirts, etc. likely to cause confusion with
PRESCOTT for cotton piece goods; "there is an obvious
intimate commercial relationship between piece goods and
articles of apparel which may be made therefrom, and there
can be no question but that the sale of such goods under
the similar marks here involved would be likely to cause
confusion or mistake or to deceive").
Applicant has attempted to interpose a new requirement
for establishing that clothing and fabric are related,
pointing to certain inter partes cases which noted the
presence or absence of a fabric mark appearing on the label
or hangtag of the clothing item in discussing whether or
not confusion was likely. However, a careful reading of
these cases reveals that no such requirement exists. For
Ser. No. 75/111,554
5
example, in E.I. du Pont de Nemours and Co. v. Sunlyra
International Inc., 35 USPQ2d 1787 (TTAB 1995), the Board
pointed out that opposer’s fabric mark appeared on finished
clothing items, and was promoted to the purchasers of
clothing, in response to the applicant’s argument that
opposer’s goods were sold only to fabric mills and clothing
manufacturers, and that purchasers of the finished clothing
would never see opposer’s mark. In the case now before us,
because there are no restrictions on the channels or trade
or purchasers of registrant’s goods, we must assume that
they travel in all channels appropriate for fabric. In re
Elbaum, 211 USPQ 639 (TTAB 1981). This would necessarily
include retail stores in which fabric is sold to the
general public. The other cases cited by applicant are
also distinguishable on their facts.
Applicant also asserts that the trade channels of the
goods are different, and that this, too, militates against
a finding of likelihood of confusion. We are not persuaded
by this argument. Although applicant has restricted the
trade channel for its clothing items to "home shopping
services through the use of television," there is no
restriction on the trade channels for the registrant’s
goods. There is no inherent reason why fabric cannot be
sold through the same trade channel used by applicant for
Ser. No. 75/111,554
6
the sale of its goods. More importantly, purchasers of
fabric in retail stores could still encounter clothing sold
through "home shopping services through the use of
television," or vice versa. As a result, consumers
familiar with registrant’s fabric sold under the mark
FREESTYLE would be likely to believe, upon seeing FREESTYLE
clothing items offered for sale through "home shopping
services through the use of television," that the fabric
and clothing emanate from or are sponsored by the same
source.
In reaching this conclusion, we have considered
applicant’s arguments regarding the weakness of
registrant’s mark, but do not find them persuasive.
Applicant has made of record a declaration by a private
investigator, Yet Mui, in which Mr. Mui stated that in 1987
he purchased a pair of women’s REEBOK FREE STYLE sneakers
in New York; that in November 1995 he was informed by a
"Reebok employee" that Reebok International, Ltd. "has used
the mark FREE STYLE" with women’s aerobic sneakers since
approximately 1984, and that the mark was being used at the
time of the call; and that in November 1995 he was informed
by a salesman in a New York City shoe store that the store
sells a sneaker made by Reebok under the name FREE STYLE.
The declaration also states that Mr. Mui spoke by telephone
Ser. No. 75/111,554
7
with an office manager for Dionysian, Inc., Jacobs
Division, who stated that, "based upon his recollection,
Jacobs once used the mark FREESTYLE in connection with a
line of children’s ski wear and also that Jacobs used the
mark FREESTYLE in connection with a children’s jacket."
That person also said that Jacobs was not presently using
the mark FREESTYLE for any purpose.4
Evidence of third-party use of a mark may be used to
show that, because the public is aware that multiple
parties use the same mark for similar goods, consumers will
realize that not all goods bearing the mark emanate from
the same source. In the present case, however, the only
evidence of third-party use is that of Reebok
International, Ltd.’s use of FREESTYLE on sneakers. The
vague information regarding Jacob’s use at some time in the
past, without any information about when the use occurred,
or the extent of the use or advertising, is not sufficient

4 The Examining Attorney has objected to the reports of the
telephone conversations as hearsay. To the extent that applicant
is using the declaration as evidence, not just of Mr. Mui’s
activities, but to prove the truth of the statements related to
him by those he called or interviewed, those reported statements
are hearsay. However, the Federal Rules of Evidence do not apply
to ex parte proceedings, and therefore the Examining Operation
and the Board are more lenient about considering evidence in such
proceedings. We have therefore considered all of the information
in the declaration, and note that the information obtained from
the "Reebok employee" is supported to some extent by Mr. Mui’s
personal knowledge.
Ser. No. 75/111,554
8
to show that the public was or is now aware of such use.
Even the evidence of Reebok’s use is of limited value,
since there is no indication about the extent of sales or
advertising from which we can ascertain public exposure to
the mark. Further, even if we were to assume widespread
use by this single party, there are greater differences
between sneakers and fabric than there are between fabric
and clothing.
Applicant has also relied on certain third-party
registrations for marks containing the word FREESTYLE.
Third-party registrations can be used in the same manner as
dictionary definitions, to show that a term has a
particular significance when used in connection with the
goods. Mead Johnson & Company v. Peter Eckes, 195 USPQ 187
(TTAB 1977). In this case, the word FREESTYLE in three of
these registrations, for WORLD FREESTYLE ASSOCIATION and
design for shirts and hats, and FREESTYLE and FREESTYLE
PLUS for, inter alia, swimsuits, suggests a swimming
stroke, and therefore has a different significance from
FREESTYLE when it is used in connection with fabric or the
sportswear identified in applicant’s application. Two
other registrations owned by the same entity for FREE STYLE
marks are for wrist watches and watch bands and for
luggage. Besides the fact that the latter registration was
Ser. No. 75/111,554
9
cancelled, neither of these registrations are for goods
which are similar to fabric or clothing.5 Accordingly,
applicant has failed to show that registrant’s mark
FREESTYLE is a weak mark for fabric, and that it is
entitled to only a narrow scope of protection.
Decision: The refusal of registration is affirmed.
E. J. Seeherman
E. W. Hanak
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board

5 Applicant refers in its reply brief to an application which
was filed by Reebok for FREE STYLE, which application was
submitted by the Examining Attorney with his brief. Although the
submission of the application by the Examining Attorney was
untimely, because applicant has treated it of record we will deem
it to have been stipulated into the record. This third-party
application has no evidentiary value, however, in that it is not,
as contended by applicant, evidence of the use of the mark by
Reebok, nor can an application be considered to be a third-party
registration.