Shoe Show, Inc.

Trademark Trial and Appeal BoardMar 20, 2009

No. 77310667 (T.T.A.B. Mar. 20, 2009)

Mailed: March 20, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Shoe Show, Inc. ________ Serial No. 77310667 _______ Francis M. Pinckney of K & L Gates LLP for Shoe Show, Inc. Ellen J.G. Perkins, Trademark Examining Attorney, Law Office 110 (Chris A.F. Pedersen, Managing Attorney). _______ Before Quinn, Bucher and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Shoe Show, Inc. (“applicant”) filed an intent-to-use application to register the mark SHOE DEPT. ENCORE, in standard character form, for “retail shoe store services,” in Class 35. Applicant claimed that the term “Shoe Dept.” has acquired distinctiveness by virtue of its ownership of Registration No. 1720873 for the mark SHOE DEPT. for “retail shoe store services,” in Class 42 issued under Section 2(f) of the Trademark Act.1 1 In the registration, applicant disclaimed the exclusive right to use “shoe.” THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77310667 2 The Trademark Examining Attorney refused to register applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark is likely to cause confusion with the mark ENCORE, in standard character form, for “retail store services and online retail services featuring women’s clothing and accessories,” in Class 35.2 Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). 2 Registration No. 3079598, issued April 11, 2006. Serial No. 77310667 3 A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, 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 so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92- 1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, Serial No. 77310667 4 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this case, the relevant public would be patrons of retail shoe and women’s clothing stores (i.e., the general public). The marks are obviously similar in terms of appearance, sound, meaning, and commercial impression because they share the word “encore.” In fact, applicant’s mark, SHOE DEPT. ENCORE, incorporates the entire registered mark. The word “encore” means “again; once more . . . 2. a demand, as by applause, for a repetition of a song, act, etc., or for a performance of a number or piece additional to those on the program, or for reappearance by the performers, as at the end of a concert, recital, etc. 3. the performance or reappearance in response to such a demand.”3 Because the word “encore” does not have any descriptive or suggestive meaning when used in connection with retail shoe or clothing store services, it is an arbitrary term and it is inherently strong. While the term “shoe dept.” is descriptive when used in connection with retail store shoe store services, it has acquired distinctiveness in connection with applicant’s 3 The Random House Dictionary of the English Language (Unabridged) p. 641 (2n ed. 1987). The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 77310667 5 services. See applicant’s Registration No. 1720873. However, applicant’s claim of acquired distinctiveness vis- à-vis “shoe dept.” is not controlling on the issue of likelihood of confusion. In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (whether applicant’s mark has acquired distinctiveness is not controlling on the issue of likelihood of confusion). The issue before us is whether SHOE DEPT. ENCORE is confusingly similar to ENCORE. “When one incorporates the entire arbitrary mark of another into a composite mark, the inclusion of a significant, nonsuggestive element will not necessarily preclude a likelihood of confusion. [Internal citations omitted]. And inclusion of a merely suggestive or descriptive element, of course, is of much less significance in avoiding a likelihood of confusion.” The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design is similar the mark CONCEPT). See also Coca-Cola Bottling Co. v. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and Bengal Lancer soldier design is similar to the mark BENGAL); In re Bissett-Berman Corp., 177 USPQ at 529 (E-CELL is similar to the mark E). Serial No. 77310667 6 Applicant argues, in essence, that the word “encore,” when used in connection with retail shoe or clothing store services, is a weak term, entitled to a narrow scope of protection because it has been extensively registered in connection with clothing and retail store services. There are several problems with applicant’s argument. First, to support its argument, applicant submitted a “hit list” of marks retrieved by two searches in the Trademark Office database: (1) “Encore” in Class 25 (the clothing class); and (2) “Encore” and “retail store” in the goods and services field. The Examining Attorney objected to the evidence. [T]he mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. See, e.g., In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1561 n.6 (TTAB 1996). To make third party (sic) registrations part of the record, an applicant must submit copies of registrations from the USPTO records only. E.g., In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In re Carolina Apparel, 48 USPQ2d 1542, 1543 n.2 (TTAB 1998); TBMP §1208.02; TMEP §710.03.4 4 June 24, 2008 Office Action. Serial No. 77310667 7 The objection is well-taken. Because applicant did not file a request for reconsideration to submit copies of the relevant registrations, we cannot give the list of registrations any consideration. Nevertheless, we cannot help but note that even if we could consider applicant’s list of registrations, they would not have proven that “encore” is a weak term. First, absent evidence of actual use, third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations reposing in the U.S. Patent and Trademark Office). See also In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983). [I]t would be sheer speculation to draw any inferences about which, if any of the marks subject of the third party (sic) registrations are still in use. Because of this doubt, third party (sic) registration evidence proves nothing about the impact of the third- party marks on purchasers in terms of dilution of the mark in question or conditioning of the purchasers as their weakness in distinguishing source. In re Hub Distributing, Inc., 218 USPQ at 286. Serial No. 77310667 8 Second, the “encore” and “retail store” search retrieved one active registration and the “encore” search in Class 25 retrieved two active registrations. Three registrations do not prove that “encore” has a suggestive or descriptive meaning or that the numerous registrations are indicative that consumers will distinguish the marks by looking to other elements of the marks.5 Applicant also contends that the marks create different commercial impressions because applicant’s use of the word “encore” modifies “shoe dept.” making “shoe dept.” the dominant portion of applicant’s mark so that “there is a specific connotation that applicant’s new stores that are operating under SHOE DEPT. ENCORE are a ‘reappearance’ or a ‘repeat performance’ of applicant’s original SHOE DEPT. stores.”6 The problem with this argument is twofold. First, we do not agree with applicant’s interpretation of the mark. We find that the term “shoe dept.” modifies “encore,” not the other way around. Because “shoe dept.” 5 Expired registrations and pending and abandoned applications have no probative value in this appeal. 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”); Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1467 n.6 (TTAB 2003) (applications are only probative to show that the application has been filed). 6 Applicant’s Brief, pp. 3-4. See also Applicant’s Brief at p. 5. Serial No. 77310667 9 has a primary descriptive meaning as a section of a store featuring shoes, the term “shoe dept.” is explaining what kind of “encore” or reappearance is occurring. Second, as indicated above, the registered mark and the applicant’s mark create a similar commercial impression involving an “encore” or repeat performance. Therefore, customers familiar with the registrant’s ENCORE retail store services in the field of women’s clothing may mistakenly believe that SHOE DEPT. ENCORE is an expansion of the registrant’s retail stores specializing in shoes. In view of the foregoing, we find the similarities of the marks outweigh the differences, and therefore the marks are similar in appearance, sound, meaning and commercial impression. B. The similarity or dissimilarity and nature of the services as described in the application and registration at issue. It is well settled that applicant’s services and the registrant’s services do not have to be identical or directly competitive to support a finding that there is a likelihood of confusion. It is sufficient if the respective services 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 Serial No. 77310667 10 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). The examining attorney submitted eleven third-party registrations based on use in commerce identifying retail store and/or online retail services in the field of women’s clothing and shoes, of which seven also included accessories. Third-party registrations which individually cover a number of different items (or services) which are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed goods or services are of a type which may emanate from the same source. 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). Moreover, since women’s clothing, shoes, and accessories are complementary products, retail shoe store services and retail store services featuring women’s clothing and accessories will likewise be considered complementary or related services. We find the following passage from In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) applicable: Serial No. 77310667 11 A woman’s ensemble, which may consist of a coordinated set of pants, a blouse and a jacket, is incomplete without a pair of shoes, which match or contrast therewith. Such goods are frequently purchased in a single shopping expedition. When shopping for shoes, a purchaser is usually looking for a shoe style or color to wear with a particular outfit. The items sold by applicant and registrant are considered complementary goods. They may be found in the same stores, albeit in different departments. We are convinced that this is a sufficient relationship between the goods to support a holding of likelihood of confusion where both sets of goods are sold under the same mark. In view of the foregoing, we find that applicant’s “retail shoe store services” and the registrant’s “retail store services and online retail services featuring women’s clothing and accessories” are related services. C. The similarity or dissimilarity of likely-to-continue trade channels and classes of consumers. Because there are no limitations as to channels of trade or classes of purchasers in either the application or the registration, it is presumed that services so identified move in all channels of trade normal for those services, and that they are available to all classes of purchasers for the listed services. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Because retail shoe store services and women’s retail clothing store Serial No. 77310667 12 services are rendered to the general public, we must presume that these services move in the same channels of trade and are available to the same consumers. D. Balancing the factors. In view of the facts that the marks are similar and that the services are related, and because we must presume that the services move in the same channels of trade and are available to the same classes of consumers, we find that applicant’s registration of the mark SHOE DEPT. ENCORE is likely to cause confusion with the mark in the cited registration, ENCORE. Decision: The refusal to register is affirmed.