San Antonio Shoe, Inc.

Trademark Trial and Appeal Board

Aug 18, 1999

No. 75079940 (T.T.A.B. Aug. 18, 1999)

Paper No. 13
HRW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re San Antonio Shoe, Inc.
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Serial No. 75/079,940
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Daniel D. Chapman of Miller, Sisson, Chapman & Nash P.C.
for San Antonio Shoe, Inc.
Chrisie Brightmire King, Trademark Examining Attorney, Law
Office 109 (Deborah S. Cohn, Managing Attorney).
_______
Before Hanak, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
San Antonio Shoe, Inc. filed an application to
register the mark TUFF TEXAS for shoes.1
Registration has been finally refused under Section
2(d) on the ground of likelihood of confusion with the
registered mark TEXAS TUFF (stylized) for clothing, namely,
jeans, and sportswear, namely, jogging suits, shorts, T-

1 Serial No. 75/079,940, filed March 28, 1996, based on a bona
fide intention to use the mark in commerce.
Ser No. 75/079,940
2
shirts, sweatshirts, and jackets.2 Applicant and the
Examining Attorney have filed briefs, but no oral hearing
was requested.
Looking first to the goods involved, we concur with
the Examining Attorney that these are closely related or
complementary clothing items which may be purchased by the
same purchaser on a single shopping expedition. See In re
Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984), and the
several cases cited therein, with respect to the close
relationship between shoes and other specific items of
clothing. While applicant argues that there is usually a
difference between the manufacturers of footwear and
clothing, and that such goods travel in different channels
of trade, the Examining Attorney has introduced evidence to
demonstrate that, more often than not, this is not the
case. Several third-party registrations have been
introduced showing use by a single entity of the same mark
for both types of apparel. Thus, purchasers might well
assume, if highly similar marks are used on both shoes and
jeans or other sportswear, that the goods emanate from the
same source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co.,

2 Reg. No. 1,467,435, issued December 1, 1987, combined Section 8
& 15 filed and accepted. A disclaimer has been made with respect
Ser No. 75/079,940
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Inc., 6 USPQ2d 1467 (TTAB 1988). Catalogs have been made
of record, showing the availability of both shoes and
clothing items to purchasers from a single source, and,
thus, that the goods travel through the same channel of
trade.
The real issue here is the similarity or dissimilarity
of the marks TEXAS TUFF and TUFF TEXAS. The marks are
obviously mere reversals of each other. Both share the
same words, the same spelling, the same alliteration. The
question is whether, taking into consideration the goods
upon which the marks are used, the transposition of these
two words creates distinctively different commercial
impressions for the respective marks. See In re Nationwide
Industries, 6 USPQ2d 1882 (TTAB 1988); and Bank of America
National Trust and Savings Association v. American National
Bank of St. Joseph, 201 USPQ 842 (TTAB 1978) and the cases
cited therein.
Applicant argues that our analysis should be made
under the premise that the registered mark is a weak mark
and entitled to only a narrow scope of protection.
However, the third-party registrations for marks containing
either the word “Texas” or “Tuff” (or a phonetic

to the word “Texas.”
Ser No. 75/079,940
4
equivalent) which applicant attached to its brief as
support for its position, and which were objected to by the
Examining Attorney, were not properly made of record and
have been given no consideration. See Trademark Rule
2.142(d). While applicant timely submitted the Internet
evidence upon which it relies to show use of the term
“tough” or its equivalent in connection the description of,
or as part of marks for, various types of clothing, we find
such evidence to be of little significance. Whether or not
the word TUFF (or “tough”) is frequently used is not the
question, but rather whether or not the same combination of
words TEXAS and TUFF has been used by anyone else in the
clothing field. None of the evidence which applicant has
submitted, or attempted to submit, touches this question.
See Bank of America National Trust and Savings Ass’n v.
American National Bank of St. Joseph, supra at 845
[although the words AMERICAN and BANK commonly appear in
names of banks, the record fails to show use by anyone in
the banking field, other than opposer (BANKAMERICA) and
applicant (AMERIBANC), of a mark combining the two terms
BANK and AMERI (or AMERICA) in a single word]. We are left
with the conclusion that TEXAS TUFF is a combination unique
to registrant, when used as a mark for wearing apparel.
Ser No. 75/079,940
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Thus, the likelihood of confusion turns on whether
applicant’s reversal of the registered mark TEXAS TUFF to
TUFF TEXAS results in a distinctly different commercial
impression. Applicant contends that TEXAS TUFF suggests
“just how ‘tough’ the goods are,” or that the clothing is
“‘tough’ like the State of Texas is ‘tough’.” On the other
hand, applicant’s transposed mark, TUFF TEXAS, is said to
convey the impression of a geographic location in Texas,
albeit a fictitious region or one of which the purchaser is
unaware. 3 Applicant argues that this difference in
commercial impression, coupled with the differences in the
goods, obviates any likelihood of confusion.
We do not agree with the quality (TEXAS TUFF) vs.
geographic location (TUFF TEXAS) distinction being advanced
by applicant. Both registrant’s jeans and sportswear and
applicant’s shoes are items which would aptly be referred
to in terms of being “tough.” The correlation of the word
TUFF with a desirable quality of the goods would be the
same for each mark. See In re Nationwide Industries, Inc.,
supra at 1884 [both RUST BUSTER and BUST RUST are likely to
be viewed as signifying that the product breaks up rust].
Moreover, we believe the commercial impression created by

3 Although applicant submitted evidence that there was a small
town named Tuff, Texas until about 1926, applicant did not argue
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the term TEXAS as meaning “just how tough” or “as tough as
Texas” would be the same, whether TEXAS proceeds or follows
TUFF. We do not believe that a meaningful distinction can
be drawn between the commercial impression created when
purchasers view a TEXAS TUFF pair of jeans, as opposed to a
TUFF TEXAS boot. The term TUFF has too much significance
as a indication of ruggedness or durability to be
interpreted as anything else.
Furthermore, we cannot ignore the fact that the
average person is not infallible in his recollection of
trademarks and may well transpose the two elements of these
marks in his mind, particularly if not viewing the marks
side-by-side. See In re Wm. E. Wright Co., 185 USPQ 445
(TTAB 1975)[FLEXI-LACE for garment findings, seam bindings,
and hem tapes and LACE-FLEX for laces in the piece not only
engender the same connotation but the resemblances in sound
and appearance are significant because average purchaser is
not infallible in recollection of marks and is prone to
transpose them].
Contrary to applicant’s arguments, the situation here
is not similar to that in In re Mavest, Inc., 130 USPQ 40
(TTAB 1961). There the Board found the mark SQUIRETOWN

that purchasers would make this association.
Ser No. 75/079,940
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when used for men’s sports coats created a distinctly
different impression from TOWN SQUIRES as used for men’s
shoes. The distinction in meaning was clear. Furthermore,
the appearance of the two marks was markedly different.
Such is not the case here.
Nor can we find a parallel in Murphy, Brill & Sahner,
Inc. v. New Jersey Rubber Co., 102 USPQ 420 (Comm. 1954),
wherein the mark TOPFLITE was found to have a definite
meaning when used for shoe soles, but FLITE TOP was
considered to have little meaning as applied to hosiery.
As stated earlier, we do not agree with applicant’s
reasoning that while TEXAS TUFF would denote ruggedness or
durability, the reverse TUFF TEXAS would not. Moreover,
the marks TOPFLITE and FLITE TOP are also quite different
in appearance, whereas TEXAS TUFF and TUFF TEXAS are highly
similar.
Finally, in In re Akzona, Inc., 219 USPQ 94 (TTAB
1983), the Board found the marks SILKY TOUCH for synthetic
yarns and TOUCH O’ SILK for men’s dress shirts to each have
a distinct meaning, the first a feel of silk, the second a
small amount of silk. And once again, the Board pointed to
the differences in the sound and appearance of the marks, a
factor clearly missing in the instant case.
Ser No. 75/079,940
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Accordingly, we find that applicant’s mark TUFF TEXAS
for shoes would be likely to cause confusion on the part of
the purchasing public, in view of registrant’s mark TEXAS
TUFF (stylized) for various clothing items.
Decision: The refusal to register under Section 2(d)
is affirmed.
B. A. Chapman
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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