The Haddad Apparel Group, Ltd.

Trademark Trial and Appeal Board

May 21, 2012

No. 77874764 (T.T.A.B. May. 21, 2012)

Mailed:
May 21, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Haddad Apparel Group, Ltd.
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Serial No. 77874764
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Simor L. Moskowitz and Leesa N. Weiss of Jacobson Holman
PLLC for The Haddad Apparel Group, Ltd.

Ronald McMorrow, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Holtzman and Kuczma, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

The Haddad Apparel Group, Ltd. (hereafter “applicant”
or “Haddad”) has appealed from the final refusal of the
trademark examining attorney to register BIG YANK in
standard characters for the following goods:
Handbags, luggage, duffel bags, all-purpose
sports bags, wallets, cosmetic bags sold empty,
athletic bags, beach bags, book bags, carry-on
bags, diaper bags, gym bags, overnight bags,
school book bags, shoulder bags, tote bags,
travel bags, traveling bags, garment bags for
travel, and backpacks (Class 18) and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77874764
2

Clothing, namely, coats, jackets, overcoats, and
rainwear, pant and jackets sets, pants, jeans,
sweatpants, sweatshirts, sweatsuits, shorts,
shirts, t-shirts, sweaters, wind suits, ski wear,
ski suits, sun suits, knit-woven tops and
bottoms, overalls, shortalls, creepers, swimwear
and swim suits, sleepwear, underwear, headwear,
hats, caps, socks, shoes, sandals, slippers
(Class 25).1

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), in light of
three registrations for YANK in standard characters,
registered by the same entity (hereafter “registrant”), for
the following goods:
Women’s clothing, namely, casual and career-
oriented apparel for juniors in the nature of
camisole tops, silk blouses, floral print
jackets, pencil skirts, dresses, pantsuits, shoes
and belts (Registration No. 3373412, issued
January 22, 2008);

Leather goods, namely purses, and leather
accessories, namely, wallets, business, calling
and credit card cases and luggage (Registration
No. 3288545, issued September 4, 2007);2 and

Men’s, women’s and children’s clothing, namely,
belts, dresses, tops, pants, jackets, suits,
shirts, shorts, sweaters, t-shirts, knit tops,
jeans, coats, blouses, bathrobes, underwear; and
intimate apparel, namely, lingerie; scarves;
headwear; footwear (Registration No. 3619914,
issued May 12, 2009).

1 Application Serial No. 77874764, filed November 17, 2009,
based on Section 1(b) of the Trademark Act (intent-to-use).
2 This registration also includes jewelry in Class 14.
Ser No. 77874764
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Applicant and the examining attorney have filed
briefs. We note that applicant, in its brief, has cited to
some cases only by their Federal Reporter citations, even
though these cases were also reported in United States
Patent Quarterly. “Any cited decision of the Board or
another court, which appears in the USPQ, should include a
citation to the USPQ, n addition to any citation to an
official reporter (if any), such as the Federal Reporter of
Federal Supplement.” TBMP § 101.03; In re Carlson, 91
USPQ2d 1198, 1199 (TTAB 2009) (case citations should
include citation to United States Patent Quarterly if the
case appears in that publication).
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, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
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Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Applicant’s goods are, in part, identical to the goods
identified in the cited registrations. Applicant’s
identified wallets and luggage in Class 18 are identical to
the wallets and luggage identified in registrant’s
Registration No. 3288545. Further, applicant’s identified
duffel bags, carry-on bags, overnight bags, travel bags,
traveling bags and garment bags for travel are encompassed
by the “luggage” identified in that registration. As for
applicant’s clothing items, its identified pants, shirts,
shorts, t-shirts, jeans, coats, jackets, underwear and
headwear are identical to these same items as identified in
Registration No. 3619914, while its knit-woven tops are
encompassed by the registrant’s identified knit tops, and
its shoes, sandals and slippers are encompassed by the
registrant’s identified footwear. We need not discuss the
remaining goods in applicant’s application, since
likelihood of confusion must be found if there is likely to
be confusion with respect to any item that comes within the
identification of goods in the application. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981). Further, because the goods
are legally identical, the goods must be presumed to travel
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in the same channels of trade and be sold to the same class
of purchasers. In re Smith and Mehaffey, 31 USPQ2d 1531,
1532 (TTAB 1994). The du Pont factors of the similarity of
the goods and channels of trade favor a finding of
likelihood of confusion.
We now turn to a consideration of the marks, keeping
in mind certain principles. First, when marks would appear
on virtually identical goods, as they do here, the degree
of similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). Second, there is nothing improper in
according, for rational reasons, more or less weight to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). Third, 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 or
services 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
Ser No. 77874764
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specific impression of trademarks. In re Association of
the United States Army, 85 USPQ2d 1264, 1268 (TTAB 2007);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Applicant’s mark is BIG YANK and the cited mark is
YANK; to the extent that both marks contain the word YANK
they are identical in appearance and pronunciation.
Applicant’s mark also includes the word BIG, but the
addition of this term to the cited mark is not sufficient
to distinguish the marks. BIG does not change the meaning
of YANK, as, for example, the additional word CLEAR in ALL
CLEAR gives this mark a different meaning from ALL. Lever
Brothers Co. v. The Barcolene Co., 463 F.2d 1107, 174 USPQ
392 (CCPA 1972). Instead, BIG would be viewed merely as a
modifier of YANK as an indication of size, with YANK being
the dominant part of the mark. The meaning of YANK is the
same in both marks. As a result, the marks convey
essentially the same commercial impression, and consumers
would view BIG YANK as a variation of the mark YANK, with
both marks indicating a single source for the goods.
The du Pont factor of the similarity of the marks
favors a finding of likelihood of confusion.
Applicant has cited a number of decisions in which the
marks included common elements, or even consisted of the
Ser No. 77874764
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same marks, but no likelihood of confusion was found. We
consider these cases to be distinguishable. We will not
engage in a detailed discussion of each case, but note that
in some of the cited cases the goods are different,
resulting in the marks having different meanings. In
others, the differences in the goods were sufficient to
avoid likelihood of confusion. In other cases, the
additional elements in the marks resulted in marks
conveying different commercial impressions. And in some of
the cases, the common element was part of so many marks
that confusion would not result merely from the inclusion
of the element in both marks. The particular fact
situations in those various cases are not present here, and
do not compel us to find that there is no likelihood of
confusion between the use of BIG YANK and YANK for legally
identical goods. Rather, in the record before us there is
no evidence that YANK is other than an arbitrary mark, nor
is there any evidence of third-party use of marks
containing or consisting of the element YANK, such that we
could find that consumers would distinguish between the two
marks based on the additional word BIG in applicant’s mark.
Applicant’s primary argument (“the crux of Applicant’s
arguments,” brief, p.2) is based on its claimed ownership
of earlier registrations for BIG YANK marks. The only
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registration which is of record is Registration No. 127985,
for which applicant, Haddad, claimed ownership in its
initial application papers. Applicant states that no
application to renew this registration was filed, and
Office records confirm that the registration has expired.
As for Haddad’s other three registrations, while they
are not of record, we note that applicant referred to these
registrations in its response to the first Office action,
and the examining attorney, in the following Office action,
referred to applicant’s arguments without advising
applicant that the registrations were not of record. In
these circumstances, we will consider the statements made
by Haddad that it owned three other registrations for BIG
YANK marks, and that two of these registrations, one for
work shirts and one for various clothing items, were
cancelled or expired in 2005.
Cancelled or expired registrations generally have no
evidentiary value, and certainly an applicant cannot claim
a right to registration based on its prior ownership of
cancelled or expired registrations. We recognize that
applicant is not attempting to make such a claim. Instead,
applicant’s argument is based on statements made by the
registrant during the prosecution of the application which
issued as Registration No. 3373412, which has been cited
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herein. According to Haddad, the registrant made certain
arguments when it was attempting to overcome the citation
of Haddad’s prior registrations, citations that presumably
related only to the registrant’s goods in Class 25.3 Haddad
contends that the registrant’s arguments during prosecution
of its application should be treated as a consent by the
registrant to the registration of Haddad’s mark.
First, we note that applicant did not make of record
the file histories for the cited registrations. Instead,
Haddad has asked in its brief that the Board take judicial
notice of the statements contained in the file histories of
Registration Nos. 3373412 and 3288545, since file histories
are official records. However, it is settled law that the
Board does not take judicial notice of registrations
residing in the Patent and Trademark Office. In re Duofold
Inc., 184 USPQ 638 (TTAB 1974). As a peripheral point, we
note that Haddad did not submit with its brief a copy of
the documents that it wishes us to judicially notice; it
has given us only its version of what the registrant’s

3 Haddad explained in its response to the first Office action
that the registrant’s application was divided during the course
of prosecution, creating a “child” application that resulted in
Registration No. 3288545. It would appear from this information
that the registrant’s original application included goods in
Classes 14, 18 and 25, and that registration was refused only
with respect to the goods in Class 25. As a result, the
registrant divided its application so that the child application
for Classes 14 and 18 could proceed to registration.
Ser No. 77874764
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arguments were. We do not know whether applicant
deliberately chose not to submit the actual papers because
there was information in the responses that does not
support applicant’s position, or whether it was merely an
oversight. In any event, we cannot consider any arguments
based on evidence that is not of record.
Again, however, we note that Haddad, in its response
to the first Office action, made arguments based on what
occurred during the prosecution of the registrant’s
applications that resulted in Registration Nos. 3288545 and
3373412, and the examining attorney acknowledged these
arguments without advising Haddad that the file histories
of the registrations were not of record. In these
circumstances, we have considered Haddad’s statements in
its April 30, 2010 response for whatever probative value
they may have.
We are not persuaded by Haddad’s arguments, as it has
not provided any evidentiary support for them. Although
Haddad has made general statements in its brief of what the
registrant’s arguments were, Haddad’s “summary” of these
purported arguments is not sufficient to make the actual
responses of record, nor can we assume that Haddad’s
summary is accurate or reflects all of the registrant’s
arguments.
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Second, even if Haddad had properly submitted copies
of the responses containing the registrant’s arguments, and
the arguments were, in fact, what Haddad claims they state,
statements made during the prosecution of an application
can be treated only “as illuminative of shade and tone in
the total picture confronting the decision maker.”
Interstate Brands Corporation v. Celestial Seasonings,
Inc., 576 F.2d 926,198 USPQ 151, 154 (CCPA 1978). Such
statements are not treated as admissions, let alone as
reflecting the registrant’s belief, at the time it
prosecuted its application, that confusion is not likely.
They certainly do not show that the registrant has
consented to the registration of Haddad’s later applied-for
mark.
Further, whether or not the registrant may have
believed there was no likelihood of confusion between its
mark for its goods in Registration No. 3373412 and Haddad’s
previously registered marks for the goods identified in its
previous registrations, with its current application
applicant seeks to register additional goods to those in
Haddad’s prior registrations. Most notably, applicant has
never owned a registration for goods in Class 18, and now
seeks to register many goods that fall in this class.
Applicant also now seeks to register its mark for many more
Ser No. 77874764
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clothing items than the “work shirts” and “apparel, namely
pants, shirts and jackets” that were identified in Haddad’s
prior registrations that were cited against the
registration of registrant’s mark.4 Accordingly, we cannot
treat the registrant’s purported arguments, made in
connection with its prosecution of an application in 2005,
as either proving that the registrant believes at this time
that Haddad’s use of BIG YANK for an expanded list of goods
is not likely to cause confusion, or as showing that the
registrant consents to Haddad’s registration of BIG YANK
for the goods identified in Haddad’s current application.
We also think it appropriate to add that this
situation differs from the case of In re Strategic Partners
Inc., 102 USPQ2d 1397 (TTAB 2012). In that case, the
applicant sought to register ANYWEAR in stylized form for
footwear, and it also had a prior existing registration for
ANYWEARS in standard character form for, inter alia,
footwear. An intervening registration had been cited
against the applicant’s application, and the Board

4 We note that Haddad’s Registration No. 2196723 includes
additional clothing items to those listed above, but a Section 8
affidavit would have been due for this registration by
February 13, 2005, and therefore is likely to have been withdrawn
as a basis for refusal for the registrant’s application which
issued under No. 3373412. The registrant’s other registration
for clothing items, No. 3619914 was not filed until 2007, and
therefore Haddad’s Registration No. 2196723, which was cancelled
in July 2005, would not have been cited as a bar.
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considered the coexistence of the two earlier registrations
for over five years to be a dispositive factor in finding
no likelihood of confusion. In the present case, Haddad
does not have any currently existing prior registrations;
moreover, it is seeking to register its mark not for the
identical goods as in its prior registrations, but for an
expanded list of goods.
Neither applicant nor the examining attorney has
discussed any other du Pont factors. We therefore treat
the remaining du Pont factors as neutral, except for the
factor of the conditions of purchase. It is clear that,
because of the nature of the goods, they are items that are
purchased by the general public, rather than by
sophisticated purchasers. Further, the goods as identified
include items that can be inexpensive or purchased on
impulse, such as socks, creepers, t-shirts, underwear,
cosmetic bags, beach bags and diaper bags. However, even
if we were to treat this factor as neutral, it does not
affect our decision. Because of the similarity of the
marks, and the legally identical goods and channels of
trade, we find that applicant’s mark for its identified
goods is likely to cause confusion with the cited
registrations.
Decision: The refusal of registration is affirmed.