Strategic Partners, Inc.

Trademark Trial and Appeal Board

Mar 28, 2012

No. 77903451 (T.T.A.B. Mar. 28, 2012)

Mailed: 3/28/12

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Strategic Partners, Inc.
________

Serial No. 77903451
_______

George W. Hoover of Blakely, Sokoloff, Taylor & Zafman for
Strategic Partners, Inc.

Edward Fennessy, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Seeherman, Quinn and Kuczma,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Strategic Partners, Inc. filed, on December 31, 2009,
an application to register the mark shown below

for “footwear.” The application claims a date of first use
anywhere and first use in commerce of August 2008.
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
THIS OPINION
IS A PRECEDENT OF THE
TTAB
Ser No. 77903451
2
§1052(d), on the ground that applicant’s mark, when applied
to applicant’s goods, so resembles the previously
registered mark shown below

for “jackets, shirts, pants, stretch T-tops and stoles”1 as
to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant, although arguing that the marks and goods
are different, centers its arguments on its ownership of an
existing registration that has coexisted with the cited
registration for over five years. Applicant claims
ownership of Registration No. 3134825 (issued August 29,
2006) of the mark ANYWEARS (in standard characters) for
“footwear, namely, men’s, women’s and children’s shoes;
hosiery; socks; stockings; insoles, but not including other

1 Registration No. 2802588, issued January 6, 2004; Section 8
filed and accepted. The registration includes the following
statement: “The name in the mark, ‘JOSIE NATORI,’ identifies a
living individual whose consent is of record.”
Ser No. 77903451
3
clothing items.”2 Applicant contends, “apart from
stylization, this mark is simply the singular form of
applicant’s currently registered mark ANYWEARS.” (Brief,
p. 3). Further, applicant points out that the
identification of goods in its existing registration and
present application are identical in part. Applicant
argues that the coexistence of its existing registration
with the cited registration is a significant fact to
consider in the likelihood of confusion analysis.
Applicant concludes “[i]n view of applicant’s current
registration of ANYWEARS, which is prima facie evidence
that this mark is not confusingly similar to any other
registered mark, and in view of the fact that the subject
mark ANYWEAR is essentially identical to the registered
mark ANYWEARS, it is an inescapable conclusion that the
subject mark is not confusingly similar to the cited mark.”

2 The application also includes a claim of ownership of
Registration No. 2804693 (issued January 13, 2004) of the mark
shown below:

(“Shoe Company” disclaimed) for the same goods. Applicant did
not file a Section 8 affidavit of continued use, and the
registration was cancelled on August 20, 2010.
Ser No. 77903451
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(Brief, p. 5).3 In its reply brief, applicant adds:
“Applicant is mindful of the close relationship between
clothing and footwear, but the differences between the
identified goods, combined with the differences between the
marks’ designs, is greater than the difference between the
singular and plural forms of applicant’s mark.” (Reply
Brief, p. 2).
The examining attorney maintains that applicant’s mark
and the registered mark are similar, and that the goods are
related. The examining attorney also states that the trade
channels for clothing and footwear are identical. In
response to applicant’s reliance on its existing
registration, the examining attorney argues that it does
not justify the registration of the “different proposed
mark”: “applicant has essentially amended its previously
registered mark in a manner that makes it more similar to
the registered mark,” because “this amendment effectively
eliminates the few differences that could enable consumers
to distinguish the marks, making confusion likely.”

3 To the extent the reference to “prima facie evidence” may be an
allusion to Section 7(b) of the Trademark Act, 15 U.S.C.
§ 1057(b), applicant’s reliance thereon overstates the statutory
presumptions. Section 7(b) states that a registration
certificate is prima facie evidence of a number of things; the
statute does not, however, state that a registration certificate
is prima facie evidence that a registered mark is not confusingly
similar to any other registered mark.
Ser No. 77903451
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(Brief, unnumbered p. 13). The examining attorney also
makes the point that the prior decisions and actions of
other examining attorneys have little evidentiary value and
are not binding on him. In support of his contention that
the goods are related, the examining attorney submitted
third-party registrations, portions of third-party
websites, and excerpts of printed publications.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973).
There is no question that the marks are similar; the
dominant element in the cited mark is ANYWEAR, and
applicant’s mark is ANYWEAR in a slightly stylized form.
Further, the examining attorney has submitted third-party
registrations showing the relatedness of the goods, that
is, that both footwear and the clothing items identified in
the cited registration may emanate from a single source
under a single mark. The relatedness between footwear and
clothing is further demonstrated by the examining
attorney’s Internet evidence and excerpts of printed
publications showing that these goods often emanate from
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the same source, travel in the same trade channels, and are
bought by the same classes of purchasers.
We would conclude, under usual circumstances, that
confusion is likely to occur among consumers in the
marketplace.
There is an unusual situation in the present case,
however, which must be considered in our analysis. We must
balance the similarities between the marks and goods
against the facts that applicant already owns a
registration for a substantially similar mark for the
identical goods, and that applicant’s registration and the
cited registration have coexisted for over five years.
The thirteenth du Pont factor relates to “any other
established fact probative of the effect of use.” Indeed,
each case must be decided on its own specific and,
sometimes, unique facts. This final factor accommodates
the need for flexibility in assessing each unique set of
facts, such as is the case in the present appeal.
As indicated above, applicant’s existing registration
for the ANYWEARS mark identifies the goods as “footwear,
namely, men’s, women’s and children’s shoes; hosiery;
socks; stockings; insoles, but not including other clothing
items.” The identification of goods in the involved
application, “footwear,” is identical in part to the
Ser No. 77903451
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identification of goods set forth in the existing
registration.
Applicant’s existing registration is for the mark
ANYWEARS in standard character form, and applicant now
seeks to register the mark ANYWEAR in a slightly stylized
form. Applicant’s registered mark in standard character
form entitles it to depict the mark regardless of font
style, size or color. In re Viterra Inc., ___F.3d___, 101
USPQ2d 1905 (Fed. Cir. 2012); and Citigroup Inc. v. Capital
City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-
59 (Fed. Cir. 2011). Thus, applicant’s existing
registration of ANYWEARS in standard character form means
that the mark can be depicted in the identical font style
and size in which applicant’s applied-for mark is shown
(or, for that matter, in the identical manner in which the
ANYWEAR portion of registrant’s mark is depicted).
Accordingly, there is no meaningful difference between the
standard character and stylized versions of applicant’s
marks.
Likewise, the difference between the singular form
ANYWEAR depicted in the applied-for mark and the plural
form ANYWEARS in applicant’s existing registration is not
meaningful. See Wilson v. Delauney, 245 F.2d 877, 114 USPQ
339, 341 (CCPA 1957) (“It is evident that there is no
Ser No. 77903451
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material difference, in a trademark sense, between the
singular and plural forms of the word ‘Zombie’ and they
will therefore be regarded here as the same mark.”); and
Chicago Bears Football Club v. 12th Man/Tennessee LLC,
83 USPQ2d 1073, 1077 (TTAB 2007) (“we cannot attribute much
trademark significance to the difference in the plural and
singular form of the word ‘Bear’ in the marks”).
Purchasers are unlikely to perceive any distinction in
overall commercial impression between ANYWEARS and ANYWEAR.
Applicant’s registered mark, a mark that is
substantially similar to the applied-for mark, both
covering “footwear,” has coexisted with the cited mark for
over five years. At this stage, applicant’s existing
registration is over five years old, and thus is not
subject to attack by the owner of the cited registration on
a claim of priority and likelihood of confusion. Cf. In re
Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994). We find that
these facts tip the scale in favor of applicant and a
finding of no likelihood of confusion.
So as to be clear, in saying that applicant’s
registered mark and its applied-for mark are substantially
similar, and are for identical goods, we are not applying
the so-called Morehouse defense. Morehouse Mfg. Corp. v.
J. Strickland & Co., 407 F.2d 881, 166 USPQ 715 (CCPA
Ser No. 77903451
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1969). The Morehouse defense is an equitable affirmative
defense which, in appropriate circumstances, may be
asserted by a defendant/applicant in an inter partes
proceeding. It is based on the principle that “[a]n
opposer cannot be ‘damaged’ within the meaning of Lanham
Act §13 by registration of a mark for particular goods or
services if applicant owns an existing registration for the
same or substantially identical mark for the same or
substantially identical goods.” J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, § 20:38 (4th ed. 2008).
See O-M Bread Inc. v. United States Olympic Committee, 65
F.3d 933, 36 USPQ2d 1041 (Fed. Cir. 1995); Green Spot
(Thailand) Ltd. v. Vitasoy International Holding Ltd., 86
USPQ2d 1283 (TTAB 2008); and Teledyne Technologies Inc. v.
Western Skyways Inc., 78 USPQ2d 1203 (TTAB 2006), aff’d,
(Appeal Nos. 06-1366, 1367, Fed. Cir., Dec. 6, 2006). This
defense does not apply in an ex parte context.
Rather, the present case involves the unique situation
presented by the coexistence of applicant’s existing
registration with the cited registration for over five
years, when applicant’s applied-for mark is substantially
similar to its existing registered mark, both for identical
goods. When we consider these facts under the thirteenth
du Pont factor, we find in this case that this factor
Ser No. 77903451
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outweighs the others and leads us to conclude that
confusion is unlikely.
Decision: The refusal to register is reversed.