Sofrane

Trademark Trial and Appeal BoardJun 9, 2010

No. 77384952 (T.T.A.B. Jun. 9, 2010)

Hearing: 4/6/10 Mailed: 6/9/10 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Sofrane ________ Serial No. 77384952 _______ Donald L. Dennison of Dennison, Schultz & MacDonald for Sofrane. Barney L. Charlon, Trademark Examining Attorney, Law Office 104 (Michael W. Baird, Managing Attorney). _______ Before Quinn, Hairston and Kuhlke, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Sofrane filed, on January 31, 2008, an intent-to-use application to register the mark RENDEZ-VOUS BY PAUL & JOE SISTER for clothing, excluding ladies’ foundation garments, namely trousers, pants, jogging suits, shorts, skirts, dresses, tops, shirts, sweatshirts, tee shirts, slipovers, waist-coats, jumpers, jackets, vests, cardigans, striped suits, raincoats, suits, ties, scarves, shawls, stockings, socks, gloves, swim suits, pajamas, nightgowns; footwear, namely, shoes, moccasins, tennis shoes, thongs, leather shoes and boots; and THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 77384952 2 headwear, namely hats and caps (in International Class 25).1 The trademark examining attorney refused registration under Section 2(d), 15 U.S.C. §1052(d), on the ground that applicant’s mark, when used in connection with applicant’s goods, so resembles the previously registered mark RENDEZVOUS for “foundation garments” (in International Class 25)2 as to be likely to cause confusion. When the refusal to register was made final, applicant appealed. Applicant and the examining attorney filed briefs,3 and both appeared at an oral hearing. Applicant asserts that it has deleted from its identification of goods all reference to underwear articles, going so far as to include a specific exclusion of “ladies’ foundation garments,” the goods listed in the cited registration. Thus, applicant argues, the respective goods have a “competitive distance,” that is, the goods are very different types of clothing, having different uses and being sold in different sections of department stores. 1 Applicant claims ownership of Registration Nos. 2289813 and 2881967, both for the mark PAUL & JOE, the first covering clothing items and the second covering cosmetics and personal hygiene products. The application also includes a statement that “‘Paul & Joe Sister’ does not identify any living individuals.” 2 Registration No. 1833907, issued May 3, 1994; renewed. 3 The examining attorney’s request for the Board to take judicial notice of the dictionary definition of “foundation(s)” is granted. Ser No. 77384952 3 Applicant also points to its incorporation of its “house mark” in the mark sought to be registered. The examining attorney maintains that the marks are similar, with the additional wording in applicant’s mark insufficient to distinguish the marks. The examining attorney further contends that the goods are similar, relying on several third-party registrations listing both foundation garments and other types of clothing. Our determination of the issue of likelihood of confusion is based on an analysis of all of 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, 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). We first turn to consider the marks. We must compare the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En Ser No. 77384952 4 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the first du Pont factor, 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 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). In light of the above, we compare applicant’s mark RENDEZ-VOUS BY PAUL & JOE SISTER to registrant’s RENDEZVOUS. The first portion of applicant’s mark is essentially identical to the entirety of registrant’s mark. The hyphen in applicant’s RENDEZ-VOUS portion does not serve to distinguish this portion from registrant’s mark. See Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n.1 (TTAB 1978) (FAST-FINDER with hyphen is in legal contemplation substantially identical to FASTFINDER without hyphen); and Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2042 (TTAB 1989) (PRO-PRINT is similar to PROPRINT). Moreover, purchasers in general are inclined to focus on the first word or Ser No. 77384952 5 portion in a trademark. Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is likely to be impressed upon the mind of a purchaser and remembered”). See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. Further, it is a general rule that likelihood of confusion is not avoided between otherwise confusingly similar marks merely by adding or deleting a house mark. Thus, given the near identity between the first portion of applicant’s mark and the entirety of registrant’s mark, confusion is likely notwithstanding any differences between the marks. In re Chica, 84 USPQ2d 1845 (TTAB 2007) (likelihood of confusion between CORAZON and CORAZON BY CHICA for jewelry); and In re Apparel Ventures, Inc., 229 USPQ 225 (TTAB 1986) (SPARKS BY SASSAFRAS (stylized) for clothing held likely to be confused with SPARKS (stylized) for footwear). There is no exception to the general rule in the present case because the marks in their entireties do not convey different commercial impressions, and the common matter in the marks is neither merely descriptive nor diluted. See generally TMEP §1207.01(b)(iii) (6th ed., rev. 2, 2010). Ser No. 77384952 6 Accordingly, the similarity between the marks in appearance, sound, meaning and commercial impression weighs in favor of a finding of likelihood of confusion. We next turn to consider the goods. With respect to this second du Pont factor, it is not necessary that the respective goods be competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. The issue is not whether consumers would confuse the goods themselves, but rather whether they would be confused as to the source of the goods. It is sufficient that the respective goods are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originated from the same producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). Likelihood of confusion may be found based on any item that comes within the identification of goods in the involved application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In considering this du Pont factor, we acknowledge that there is no per se rule governing likelihood of confusion in Ser No. 77384952 7 cases involving clothing items. In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). As shown by the dictionary definition of record, “foundation(s)” are undergarments that include, among others, a one-piece bra and girdle, and a bustier, a one- piece bra and waist cincher. Fairchild’s Dictionary of Fashion (2d ed. 1998). The record includes evidence that foundation garments, as well as other clothing items (e.g., skirts, dresses and jumpers), often emanate from the same source under the same mark. In connection with this du Pont factor, the examining attorney introduced several third-party use-based registrations showing that the same entities have registered a single mark for underwear, as well as for clothing items identical to some of the ones listed in the involved application. “Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See Ser No. 77384952 8 also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785- 86 (TTAB 1993). In passing, we also note that applicant’s original identification of goods, in connection with which applicant alleged a bona fide intent to use the mark, included “underwear.” Because of the relatedness between clothing and foundation garments, applicant’s strategy of deleting “underwear” and adding the terminology “excluding ladies’ foundation garments” in its identification of goods falls short of sufficiently distinguishing the goods for purposes of the likelihood of confusion analysis. Insofar as the trade channels and classes of purchasers are concerned, we note that there are no trade channel limitations in either applicant’s or registrant’s identification of goods. Accordingly, we must presume that the goods, as identified, are marketed in all normal trade channels for such goods and to all normal classes of purchasers for such goods. In re Elbaum, 211 USPQ 639 (TTAB 1981). Thus, given the similarity between foundation garments and clothing, we presume that the goods move in the same or similar trade channels (e.g., clothing stores, boutiques, department stores, and the like). Further, given the absence of any limitations as to purchasers, we presume that the goods are bought by the same classes of consumers, including ordinary ones. Inasmuch as the Ser No. 77384952 9 identifications do not include any limitations as to cost, we must also presume that the goods include relatively inexpensive items that would be subject to impulse purchase made by ordinary consumers with nothing more than ordinary care. The above du Pont factors relating to the similarities of the goods, trade channels, purchasers and conditions of sale all weigh in favor of finding a likelihood of confusion. See Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549, 550 (CCPA 1961) (likelihood of confusion between identical marks for “men’s and boys’ underwear” and “women’s boots”); Jockey International Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (underwear and neckties); In re Lar Mor International, Inc., 221 USPQ 180, 181 (TTAB 1983) (“Women’s undergarments and women’s outerwear such as sweaters, shirts, and skirts, we believe, are sufficiently related so that if they were sold under confusingly similar marks, there would be a likelihood of confusion.”); David Crystal, Inc. v. Glamorise Foundations, Inc., 189 USPQ 740, 741 (TTAB 1976) (“various articles of wearing apparel are generally purchased in the same retail outlets by the same class of purchasers and often during the course of the same shopping excursion...Brassieres sold in packages are goods Ser No. 77384952 10 that one may expect to find in the same retail outlets, or in closely associated retail departments in variety or department stores, that would sell opposer’s goods, particularly ladies’ suits, skirts, blouses and dresses, for which applicant’s goods are complementary items. Accordingly, we take applicant’s goods to be closely related to opposer’s goods.”); and Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (brassieres and girdles related to slacks for men). We conclude that consumers familiar with registrant’s foundation garments sold under the mark RENDEZVOUS would be likely to mistakenly believe, upon encountering applicant’s mark RENDEZ-VOUS BY PAUL & JOE SISTER for women’s clothing items, that these goods originated with or are somehow associated with or sponsored by the same entity. Lastly, 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); and In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). Decision: The refusal to register is affirmed.