Rascan, Inc.

Trademark Trial and Appeal Board

Sep 30, 2010

No. 77630049 (T.T.A.B. Sep. 30, 2010)

Mailed: September 30, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rascan, Inc.
________

Serial No. 77630049
_______

David E. Bennett of Coats & Bennett, P.L.L.C. for Rascan,
Inc.

George M. Lorenzo, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Holtzman, Cataldo and Taylor, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Rascan, Inc. has filed an application to register on
the Principal Register the mark shown below

for “athletic shoes” in International Class 25.1

1 Application Serial No. 77630049, filed on December 8, 2008,
and asserting a bona fide intention to use the mark in commerce.
The application contains the following statements: “The mark
consists of two trapezoids stacked on top of each other with the
words YOU DECIDE! underneath.” and “Color is not claimed as a
feature of the mark.”

THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 77630049

2
The examining attorney has refused registration on the
ground that there is a likelihood of confusion with the
mark in Registration No. 2715653, YOU DECIDE COLLECTION BY
S.M. REINHARDT, for “neckties” in International Class 252
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d).3
After the refusal was made final, applicant appealed.
Both applicant and the examining attorney filed briefs.
For the reasons discussed below, we affirm the refusal to
register.
Before considering the merits of this appeal, we
address an evidentiary matter. Applicant has submitted a
list of 47 registrations retrieved from a search of the
USPTO’s TESS database of applications and registrations
which consist of or include the words “you decide.”4 The
examining attorney contends that the list should not be
made part of the record because applicant, in the Final

2 Issued July 22, 2002; Section 8 affidavit accepted, Section 15
affidavit acknowledged. The word “collection” has been
disclaimed. In addition, the registration includes the following
statement: “‘S.M. Reinhardt’ identifies a living individual
whose consent is of record.”
3 Registration No. 2740770 for the mark YOU DECIDE COLLECTION
(for “neckties” and owned by the registrant herein) was also
cited as a bar to registration. However the registration was
cancelled by the Office on February 28, 2008. Accordingly, we
consider Registration No. 2715653 as the sole bar to registration
in this appeal.
4 We note that in its brief applicant has mischaracterized the
list as “third-party registrations.”
Ser No. 77630049

3
Office Action, was advised that the mere submission of a
list of registrations (or a copy of a private company
search report) does not make them of record and, further,
was instructed in how to make the third-party registrations
properly of record. As the examining attorney made clear,
to make a third-party registration of record, a copy of the
registration, either a copy of the paper USPTO record, or a
copy taken from the electronic records of the Office,
should be submitted. See generally TBMP § 1208.02 (2d ed.
rev. 2004). See also In re Duofold Inc., 184 USPQ 638
(TTAB 1974). Applicant did not provide copies of the
listed registrations as instructed. Inasmuch as applicant
was warned of the evidentiary failing at a time when it
could correct the deficiency, and still failed to correct
it, the search report will not be considered.5

5 Even if we had considered the list, our decision would be the
same since a mere listing of third-party marks, without any
accompanying indication of the goods and/or services associated
therewith, has virtually no probative value. See TBMP § 1208.02
(2d ed. rev. 2004), and the authorities cited therein. Further,
the expired registrations and pending and abandoned applications
are also of no value. See Action Temporary Services Inc. v.
Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir.
1989) (“[A] cancelled registration does not provide constructive
notice of anything”), and the applications show only that they
have been filed. Interpayment Services Ltd. v. Docters & Thiede,
66 USPQ2d 1463 (TTAB 2003).

Ser No. 77630049

4
Turning back to the merits of this appeal, our
determination of the issue of likelihood of confusion is
based on an analysis of all the probative facts in evidence
that are relevant to the factors set forth in In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201 Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities
between the goods. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and the differences in the marks.” Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976); and In re Azteca Restaurant Enterprises, Inc.,
50 USPQ2d 1209 (TTAB 1999) and the cases cited therein.
We first compare applicant’s mark with
registrant’s standard character mark YOU DECIDE COLLECTION
BY S.M. REINHARDT. Applicant maintains that “[i]n view of
the great dissimilarity of the marks in meaning, when
Ser No. 77630049

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applied to their respective goods, and the non-negligible
dissimilarity of the marks in appearance, this [du Pont]
factor weighs in favor of a finding that no likelihood of
confusion exists.” Applicant’s br. p. 8. The examining
attorney, on the other hand, maintains that “applicant’s
mark is confusingly similar to the cited registered mark
due to common use of the dominant wording YOU DECIDE”6 and
that the goods are related.
In determining the similarity or dissimilarity of the
marks, we must compare the marks in their entireties in
terms of appearance, sound, connotation and commercial
impression of each mark. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). Although we must
compare the marks in their entireties, one feature of a
mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
(Fed. Cir. 1985) (“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 the
ultimate conclusion rests on consideration of the marks in

6 Examining Atty.’s br. unnumbered p. 3.
Ser No. 77630049

6
their entireties.”). For instance, “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 224 USPQ at 751.
Furthermore, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods and/or services offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
With these principles in mind, we consider the marks
and initially find that the words YOU DECIDE dominate the
mark in the cited registration. As regards the phrase “BY
S.M. REINHARDT,” given the mark’s structure and syntax, the
phrase modifies the wording YOU DECIDE COLLECTION and
simply imparts information about the designer of
registrant’s goods, a common practice in the apparel
industry. The descriptive and disclaimed term “collection”
has no source-indicating significance as it merely
Ser No. 77630049

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identifies the set of neckties offered for sale under the
cited mark. It is the words YOU DECIDE that purchasers
would perceive as the dominant element of the mark.
As for applicant’s mark, it consists of the words YOU
DECIDE punctuated by an exclamation point and including a
two-stacked trapezoid design positioned over the wording.
The exclamation point, used as punctuation, has no
meaningful impact visually, aurally or as to commercial
impression. See In re Burlington Industries, Inc. 196 USPQ
718, 719 (TTAB 1977) (“An exclamation point does not serve
to identify the source of the goods). In addition, while
the dual trapezoid design is clearly noticeable, it is
likely to be viewed as decorative and not source-
indicating. It is the words YOU DECIDE which make the more
noticeable impression, and which are more likely to be
remembered as the source-signifying portion of applicant’s
mark, because they will be used by purchasers to call for
applicant’s goods. See In re Dakin’s Miniatures, Inc., 59
USPQ2d 1593 (TTAB 2001) (“words are normally accorded
greater weight because they would be used by purchasers to
request the goods”); and In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987) (“if one of the marks [at issue]
comprises both a word and a design, then the word is
normally accorded greater weight because it would be used
Ser No. 77630049

8
by purchasers to request the goods or services”)(citation
omitted).
Accordingly, notwithstanding any differences that
exist between the respective marks when viewed on the basis
of a side-by-side comparison, we find that the marks in
their entireties, are not only substantially similar in
appearance due to the shared phrase YOU DECIDE but, in
light thereof, they are substantially similar in
connotation and convey a substantially similar commercial
impression.
We simply are not persuaded by applicant’s assertion
that the marks have different meanings. Applicant
particularly contends that its mark as applied to athletic
shoes is suggestive of the shoe’s construction, which
applicant explains are constructed in such a way that a
user can decide for him or herself whether to wear the
shoes as high tops or low tops. The cited mark, applicant
further contends, is likely to be perceived as either
arbitrary or as a promotion of the FOX News Network’s news-
casting slogan, “WE REPORT. YOU DECIDE.” First, the cited
mark includes only the words “YOU DECIDE” and there is no
evidence in the record that purchasers would make the
connection between the words YOU DECIDE as shown in the
cited mark and the Fox New’s news slogan. Next, even if
Ser No. 77630049

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consumers perceive the words YOU DECIDE in applicant’s mark
as meaning some type of choice, it is just as likely that
those words will impart the same meaning in relation to
registrant’s neckties. In a society where a man’s suit is
somewhat uniform in style, usually varying only slightly in
cut and color, it is the choice of a tie that lends
uniqueness and personality to his attire.
In short, even if consumers perceive some slight
differences in connotations of the marks, these differences
are outweighed by the substantial similarity in appearance,
sound and commercial impression.
The factor of similarity of the marks thus favors a
finding of likelihood of confusion.
We next consider the du Pont factors of relatedness of
the goods, trade channels and classes of purchasers. It is
well settled that the question of likelihood of confusion
must be determined based on an analysis of the goods
recited in applicant’s application vis-à-vis the goods
recited in the registration. Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir.
1992); and The Chicago Corp. v. North American Chicago
Corp., 20 USPQ 2d 1715 (TTAB 1991). Further, it is a
general rule that applicant’s goods and registrant’s goods
do not have to be identical or directly competitive to
Ser No. 77630049

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support a finding that there is a likelihood of confusion.
It is sufficient if the respective products are related in
some manner and/or that the conditions surrounding their
marketing are such that they would be encountered by the
same persons under circumstances that could, because of the
similarity of the marks used in connection therewith, give
rise to the mistaken belief that they emanate from or are
associated with a single source. In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
Applicant argues that its athletic shoes are not
related to the registrant’s neckties because the respective
goods have different uses, are not complementary in nature
as they are not ordinarily worn together, and are sold in
different stores or different areas of larger department
stores.
The examining attorney, on the other hand, argues that
the goods are related because they are both items of
clothing and are of a type that may emanate from the same
source. In support his position, the examining attorney
has made of record twenty use-based third-party
registrations that cover both athletic shoes (or footwear
Ser No. 77630049

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in two instances7) and neckties. Of the twenty
registrations, we find twelve particularly probative, i.e.,
Registration Nos. 3529643, 3425431, 3502367, 3470523,
3577328, 3582300, 3578916, 3249261, 3267477, 3443753,
3639002, 3095095.8 While these registrations are admittedly
not evidence of use in commerce, they are sufficient to
suggest that both types of goods are ones that might be
provided by a single entity and offered to the public under
the same mark. In re Albert Trostel & Sons Co., 29 USPQ2d
at 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988).
Based on the third-party registrations, we conclude
that applicant’s athletic shoes are related to registrant’s
neckties, such goods all being wearing apparel that may
emanate from the same source under the same mark.
Moreover, while we agree that applicant’s athletic shoes
and registrant’s neckties are not complementary in the
sense that they are usually worn together, they are
nonetheless apparel items that will be purchased by the

7 We consider “footwear” as listed in the identification of two
registrations, i.e., 3502367 and 3639002, as being broad enough
to encompass the more narrowly defined “athletic shoes.”
8 Of the remaining eight, one is cancelled (Registration No.
2667345), one appears to be owned by a large retail store,
(3013209), one is owned by a college (3532625), one is owned by a
sports franchise (3185804) and four are owned by designers
(3643047, 3086192, 3497202 and 3376632).

Ser No. 77630049

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same consumer. In addition, neckties are common gift items
and are often the subject of impulse purchasing. Under
these circumstances, the same consumers who purchase
neckties sold under registrant’s YOU DECIDE COLLECTION BY
S.M. REINHARDT mark will be likely to believe that the
athletic shoes to be sold under applicant’s YOU DECIDE! and
design mark would emanate from a common source, even if
they are found in different stores or are displayed in
different locations of the same store.
To the extent that applicant has relied upon a variety
of cases to bolster its contention that the goods are not
related, as is often noted by the Board and the Courts,
each case must be decided on its own merits. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001). See also, In re Kent-Gamebore Corp., 59
USPQ2d 1373 (TTAB 2001); and In re Wilson, 57 USPQ2d 1863
(TTAB 2001). Herein, the record clearly supports our
finding that the goods are related.
Further, in the absence of any limitations in the
application and cited registration as to channels of trade
and classes of purchasers, we must presume that both
applicant’s athletic shoes and registrant’s neckties are or
will be sold in all the normal trade channels for such
goods, including department stores, and to all normal
Ser No. 77630049

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classes purchasers for such goods, including ordinary
consumers. See In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). We thus find that the channels of trade and the
classes of purchasers at least overlap.
Accordingly, the du Pont factors of relatedness of the
goods, channels of trade and classes of purchaser favor a
finding of likelihood of confusion.
Applicant also argues that because “YOU DECIDE” is
commonly used in marks owned by different companies for
numerous types of goods and services, registrant’s cited
mark is weak and entitled to a narrow scope of protection.
As previously discussed, there is no evidence of record
supporting this position. Moreover, even if registrant’s
mark was considered to be weak due to an asserted degree of
common usage of marks including “YOU DECIDE,” even weak
marks are entitled to protection where confusion is likely.
See Matsushita Electric Company v. National Steel Co., 442
F.2d 1383, 170 USPQ 98, 99 (CCPA 1971) [“Even though a mark
may be ‘weak’ in the sense of being a common word in common
use as a trademark, it is entitled to be protected
sufficiently to prevent confusion from source arising”].
Here, notwithstanding any alleged weakness in the
registered mark, it is still similar in sound, appearance,
Ser No. 77630049

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connotation and commercial impression to applicant’s mark.
We accordingly find this du Pont factor is neutral.
Based on all of the evidence of record bearing on the
relevant du Pont factors, we find that applicant’s mark YOU
DECIDE! and design for athletic shoes is likely to cause
confusion with the cited registration YOU DECIDE COLLECTION
BY S.M. REINHARDT for neckties. We conclude so principally
due to the similarity of the marks, the relatedness of the
goods and the overlap in channels of trade and classes of
purchasers. Last, to the extent that any of the points
raised by applicant raise a doubt about likelihood of
confusion, that doubt is required to be resolved in favor
of the prior registrant. In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).

Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.