St. Clair Apparel, Inc.

Trademark Trial and Appeal Board

Jan 29, 2002

No. 75649382 (T.T.A.B. Jan. 29, 2002)

1/29/02

Paper No. 11
Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re St. Clair Apparel, Inc.
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Serial No. 75/649,382
_______

Susan B. Flohr of Blank Rome Comisky & McCauley for St.
Clair Apparel, Inc.

Nora Buchanan Will, Trademark Examining Attorney, Law
Office 101 (Jerry Price, Managing Attorney).
_______

Before Quinn, Bottorff and Rogers, Administrative Trademark
Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark ST. CLAIR APPAREL, in typed form, for goods
identified in the application as “men’s, women’s and
children’s clothing, namely, tops, sport shirts, T-shirts.”1

1 Serial No. 75/649,382, filed March 2, 1999. The application is
based on use in commerce, and December 1998 is alleged as the
date of first use of the mark and first use of the mark in
commerce.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/649,382
2
Applicant has disclaimed the exclusive right to use APPAREL
apart from the mark as shown.
The Trademark Examining Attorney issued three refusals
of registration under Trademark Act Section 2(d), 15 U.S.C.
§1052(d), on the ground that applicant’s mark, as applied
to applicant’s goods, is confusingly similar to three
registrations owned by three different registrants: the
mark CARLY ST. CLAIRE, registered in typed form for
“clothing, namely, sweaters”;2 the mark MARIE ST. CLAIRE,
registered in typed form for “women’s clothing, namely,
dresses”;3 and the mark NINA ST. CLAIRE, registered in
stylized form for “women’s clothing, namely, skirts, pants,
shorts, culottes, jackets, vests, jumpsuits, blouses,
shirts, tops, belts and scarves.”4
When the refusals were made final, applicant filed
this appeal. Applicant and the Trademark Examining
Attorney filed main briefs, and applicant filed a reply

2 Registration No. 2,029,041, issued January 1, 1997, owned by
Tiara International, Inc.

3 Registration No. 1,797,894, issued October 12, 1993 (Section 8
and 15 affidavits accepted and acknowledged), owned by LCEL
Collectibles, Inc.

4 Registration No. 1,642,124, issued September 11, 1990 (Section
8 and 15 affidavits accepted and acknowledged), owned by Teddi of
California.

Ser. No. 75/649,382
3
brief. No oral hearing was requested. We affirm each of
the refusals of registration.
The only evidence of record on appeal are the six
third-party registrations the Trademark Examining Attorney
attached to her final refusal.5 Those registrations, all of
which cover clothing items, are of the marks CLAIBORNE and
LIZ CLAIBORNE (both of which are owned by a single
registrant), LAUREN and RALPH LAUREN (both of which are
owned by a single registrant), and ADRIENNE VITTADINI and
VITTADINI SPORT (both of which are owned by a single
registrant). The Trademark Examining Attorney offered this
evidence in support of her contention that, in the apparel
industry, it is common for a company to market its clothing
products under the name of an individual, and for such a
company to use both a trademark consisting of the
individual’s surname as well as a trademark consisting of
the individual’s full name.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E.I. du

5 We note that applicant submitted numerous evidentiary materials
with its reply brief. These materials were not previously made
of record prior to the filing of the appeal. Accordingly, we
have not considered them, nor applicant’s arguments based
thereupon. See Trademark Rule 2.142(d).
Ser. No. 75/649,382
4
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Based on the identifications of goods in the
application and in the three cited registrations, we find
that applicant’s goods are legally identical to certain of
the goods identified in the NINA ST. CLAIRE registration
(i.e., “blouses, shirts, tops”) and closely related to the
remainder of the goods identified in that registration, and
that they are closely related to the goods identified in
the CARLY ST. CLAIRE and MARIE ST. CLAIRE registrations.
Furthermore, given this close relationship between the
respective goods, and in view of the absence of any
restrictions in the respective identifications of goods, we
find that applicant’s goods and the goods identified in
each of the cited registrations are marketed in the same or
highly similar trade channels, and to the same or highly
similar classes of purchasers. See Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1
Ser. No. 75/649,382
5
USPQ2d 1813 (Fed. Cir. 1987); In re Elbaum, 211 USPQ 639
(TTAB 1981). These du Pont factors weigh in favor of a
likelihood of confusion finding in this case. Applicant
does not contend otherwise.
We turn next to a determination of whether applicant’s
mark and each of the cited registered marks, when compared
in their entireties in terms of appearance, sound and
connotation, are similar or dissimilar in their overall
commercial impressions. 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 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 an a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). Furthermore, although the marks at
issue must be considered in their entireties, it is well-
settled that 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).
Ser. No. 75/649,382
6
Finally, where, as in the present case, the marks would
appear on legally identical and/or closely related goods,
the degree of similarity between the marks which is
necessary to support a finding of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ 1698 (Fed. Cir. 1992).
Initially, we find that the designation ST. CLAIR is
the dominant feature of applicant’s mark, and that it
therefore is the feature which is entitled to the greatest
weight when we compare applicant’s mark to the cited
registered marks. In making those comparisons, we do not
disregard the presence of the disclaimed, generic word
APPAREL in applicant’s mark, but we find that it
contributes relatively little to the mark’s commercial
impression, and we therefore have accorded it relatively
less weight in our analysis of the marks. See In re
National Data Corp., supra.
In terms of appearance and sound, we find that
applicant’s mark is essentially identical to each of the
cited registered marks to the extent that it, and they,
include the designation ST. CLAIR or ST. CLAIRE. We find
that the difference in spelling between ST. CLAIR and ST.
CLAIRE is inconsequential, and that the marks are legal
equivalents in terms of appearance and sound to the extent
Ser. No. 75/649,382
7
that they each include ST. CLAIR or ST. CLAIRE.
Applicant’s mark and the registered marks obviously differ
in terms of appearance and sound to the extent that
applicant’s mark contains the generic word APPAREL while
the registered marks do not, and to the extent that the
registered marks each include a first name, while
applicant’s mark does not. However, viewing the marks in
their entireties, we find that the similarity in appearance
and sound resulting from the presence in each mark of the
term ST. CLAIR or ST. CLAIRE outweighs the dissimilarities
which result from the presence or absence of the other
words in the respective marks.
In terms of connotation, we find that applicant’s mark
is similar to each of the cited registered marks in that
each of the marks connotes the name of a person named ST.
CLAIR or ST. CLAIRE. The presence in applicant’s mark of
the generic word APPAREL does not negate or detract from
that connotation. Applicant argues that its mark would be
perceived as connoting apparel originating from a
geographic place called ST. CLAIR, a connotation not shared
by any of the cited registered marks. However, there is no
evidence in the record that such a place exists, or that,
if it does exist, that it is anything more than a remote or
Ser. No. 75/649,382
8
obscure place.6 We cannot conclude that any such geographic
significance of ST. CLAIR suffices to negate the obvious
surname significance and connotation of the term, or that
purchasers viewing applicant’s mark necessarily would see
it only as a geographic term and be able to distinguish it
from any of the cited registered marks on that basis. We
find that applicant’s mark, viewed in its entirety, has a
connotation which is similar to the connotation of each of
the cited registered marks.
In view of the Trademark Examining Attorney’s evidence
that clothing companies often use personal name marks, and
that those marks can be either the surname alone or a full
name (first name and last name), we find that purchasers
familiar with any of the cited registered marks would be
likely to mistakenly assume, upon encountering applicant’s
mark used on the same or closely related goods, that a
source connection exists. Applicant’s mark is confusingly
similar to each of the registered marks, and each of those
previous registrations bars issuance of the registration
that applicant seeks.
Applicant argues that the designation ST. CLAIRE in
the registered marks is a descriptive or otherwise weak

6 We note that, according to the application, applicant is
located in South Bend, Indiana.
Ser. No. 75/649,382
9
term, such that the minor points of distinction between
applicant’s mark and the cited registered marks suffice to
eliminate any likelihood of source confusion. We are not
persuaded. Contrary to applicant’s contention, none of the
registered marks is merely descriptive by virtue of its
being a personal name. Personal name marks (so long as
they are not primarily merely surnames) are deemed to be
inherently distinctive and are registrable on the Principal
Register without resort to the acquired distinctiveness
provisions of Section 2(f).7 Accordingly, we reject as
inapposite the cases applicant cites for the proposition
that merely descriptive marks are to be accorded a narrow
scope of protection. Equally inapposite are the cases
cited by applicant for the proposition that registrations
can be used in the manner of dictionaries as evidence of
the meaning of the terms appearing in the registered marks.
Applicant has not specified, and we cannot discern, how the
presence of ST. CLAIRE in the three cited registrations
constitutes evidence of what ST. CLAIRE means, or how that
revealed meaning of the term affects this case. Finally,

7 Indeed, the three registrations cited by the Trademark
Examining Attorney in this case each issued on the Principal
Register, and two of them are now incontestable. To the extent
that applicant, by calling the registered marks merely
descriptive, is challenging the validity of the registrations,
such challenge is without legal or procedural basis in this ex
parte proceeding.
Ser. No. 75/649,382
10
we find that Taj Mahal Enterprises, Ltd. v. Trump, 15
USPQ2d 1641 (DC NJ 1990), in which the court found that the
mark TAJ MAHAL for restaurants was weak and diluted based
on evidence that there were twenty-four third parties using
the term in connection with restaurants, is so readily
distinguishable from the present case (which involves three
registered marks) that it is of no persuasive value as
authority here.
We likewise are not persuaded by applicant’s argument
that if the three cited registered marks can co-exist in
the marketplace and on the register, applicant’s mark can
co-exist as well. Rather, we find that the three
registered marks are readily distinguishable from each
other, inasmuch as each of them would be perceived as
connoting or referring to a different person, each with a
readily distinguishable first name. Applicant’s mark, in
contrast, does not readily or necessarily connote an
additional or different person. Instead, it connotes a
person with the surname ST. CLAIR, who, given the industry
practice of using both surnames alone and full names as
marks, could readily be perceived to be the NINA ST.
CLAIRE, or CARLY ST. CLAIRE, or MARIE ST. CLAIRE who is
identified in the respective registered marks.
Ser. No. 75/649,382
11
In summary, we have considered all of the evidence
properly made of record with respect to the du Pont
evidentiary factors, and we conclude that a likelihood of
confusion exists as between applicant’s mark and each of
the three cited registered marks.
Decision: Each of the Section 2(d) refusals is
affirmed.