Ubiquitous Industries, Inc.

Trademark Trial and Appeal Board

Dec 14, 2006

No. 76567513 (T.T.A.B. Dec. 14, 2006)

Mailed: December 14, 2006
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ubiquitous Industries, Inc.
________

Serial No. 76567513
_______

Mary L. Grieco and Safia A. Anand of Dreier LLP for Ubiquitous
Industries, Inc.

Susan Billheimer, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Hohein, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Ubiquitous Industries, Inc. has filed an application to
register on the Principal Register the mark "UCS DUNGAREE CO."
and design, as reproduced below,

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 76567513
2
for "clothing, namely, jeans, pants, shorts, tops, skirts,
jackets, coats, headwear, and footwear" in International Class
25.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles each of
the following marks, which are registered on the Principal
Register for various goods in International Class 25 by different
registrants, as to be likely to cause confusion, or to cause
mistake, or to deceive:
(i) the mark "UCS" and design, which is
registered, as shown below,

for, inter alia, clothing, namely, coats,
dresses, footwear, gloves, hats, jackets,
pants, sunglasses, visors, bags, scarves,
shirts, skirts, socks, sweatshirts and adult
and student uniforms";2 and

(ii) the mark "UCS," which is
registered, in standard character form, for
"shoes, namely, leather shoes, boots, lounge
shoes, sports shoes, insoles for shoes, sock
linings for shoes, soles for shoes, [and]
middle soles."3

1 Ser. No. 76567513, filed on December 15, 2003, which is based on an
allegation of a date of first use anywhere and in commerce of November
2003. The terms "DUNGAREE CO." are disclaimed.

2 Reg. No. 2,531,386, issued to Utica Community School District on
January 22, 2002, which sets forth a date of first use of the mark
anywhere and in commerce of August 1995.

3 Reg. No. 2,882,200, issued to Success Ocean Industrial Ltd. on
September 7, 2004, which sets forth a date of first use of the mark
anywhere and in commerce of January 7, 2001.

Ser. No. 76567513
3
Applicant has appealed and briefs have been filed.4 We
affirm the refusal to register as to both cited registrations.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods at issue and the similarity or
dissimilarity of the respective marks in their entireties.5
Here, inasmuch as applicant's goods include items (namely, coats,
footwear, jackets, pants, skirts and headwear) which are
identical in part to or otherwise encompass goods which are set
forth in the cited registrations (specifically, coats, footwear,

4 With respect to the evidence attached as Exhibit A to applicant's
brief, which applicant states consists of "copies of records from the
Canadian Intellectual Property Office's Trademark Database," the
Examining Attorney in her brief has objected to consideration thereof,
accurately observing that "applicant improperly submits evidence that
was not previously provided to the trademark examining attorney."
Inasmuch as such evidence is clearly untimely under Trademark Rule
2.142(d), the objection is sustained. It is pointed out, however,
that even if such evidence, which applicant maintains shows the
coexistence of Canadian registrations for the mark "JAKE & CO" for
"shorts, being underwear for men and boys," and the mark "JAKE'S" for
various items of "clothing," were to be given consideration, it would
make no difference in the disposition of this appeal. See, e.g.,
Person's Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1479
(Fed. Cir. 1990) ["[t]he concept of territoriality is basic to
trademark law; trademark rights exist in each country solely according
to that country's statutory scheme"].

5 The court, in particular, pointed out that: "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."
192 USPQ at 29.
Ser. No. 76567513
4
jackets, pants, skirts, hats and visors in the case of the
stylized "UCS" mark and leather shoes, boots, lounge shoes and
sports shoes as to the standard character form "UCS" mark), the
focus of our inquiry is accordingly on the similarities and
dissimilarities in the marks at issue.6
In this regard, we note as a preliminary matter that as
stated by our principal reviewing court in Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994),
"[w]hen marks would appear on virtually identical goods ..., the
degree of similarity [of the marks] necessary to support a
conclusion of likely confusion declines." Applicant argues in
its brief, however, that confusion is not likely for, in essence,
the following two reasons:
First, there is no likelihood of confusion
between Applicant's Mark and the Cited Marks
because there is no similarity between the
Cited Marks and Applicant's Mark. Second,
the Cited Marks resemble one another more
than Applicant's Mark resembles either of
them; the Cited Marks are for the same or
highly related goods and both have been
allowed to pass to registration; therefore,
Applicant's Mark should be able to pass to
registration as well.

As to the first reason, applicant argues that when its
mark and the cited marks are considered in their entireties, the
mere fact that the term "UCS" is common to each mark does not
mean that confusion is likely. According to applicant, "the

6 Applicant, we note, does not contend otherwise in its brief, stating
that "an analysis of all the DuPont factors is not necessary because
an analysis of the similarity of the marks is dispositive."

Ser. No. 76567513
5
Cited Marks are simply stylized or typewritten versions of the
letters 'UCS,' [while] Applicant's Mark contains a highly
stylized design logo wherein the letters 'UCS' do not
predominate." The "most dominant aspect of Applicant's Mark,"
applicant insists, is "the stylized design logo that sets this
mark apart from the Cited Marks." Although acknowledging that
the term "UCS" appears in its mark as part of the phrase "UCS
DUNGAREE CO.," applicant maintains that its mark "is much more
than a simple block letter display of the letters 'UCS,' whereas
the Cited Marks contain nothing more than a display of the three
letters" of which each is comprised. Moreover, while also noting
that it has disclaimed the words "DUNGAREE CO." in its mark,
applicant contends that "[c]onsumers are more likely to remember
the term UCS Dungaree Co. in its entirety, and [are] even more
likely to recognize the design of Applicant's Mark[,] than they
are to remember the letters 'UCS' alone."
Applicant contends, in view of the above, that in
finding that there is a likelihood of confusion, "the Examining
Attorney seems to ... ignore the term 'DUNGAREE CO.' when
analyzing the word portion of the [applicant's] mark." In
particular, applicant asserts that (emphasis in original):
Indeed, the Examining Attorney gives no
support for her claim that the term "UCS"
will create more of a commercial impression
in the mind of consumers than the terms
"Dungaree Co." or the design, and instead
states in a conclusive manner "[t]he
disclaimed portion of applicant's proposed
mark is less significant because disclaimed
matter is typically less significant or less
dominant when comparing marks ... The terms

Ser. No. 76567513
6
'Dungaree Co.' will create less of a
commercial impression in the minds of
consumers than the terms 'UCS'". See Final
Office Action. On the contrary, "[t]here is
no ironclad rule that disclaimed matter will
be disregarded as the dominant or most
significant feature of a mark." See In re
TSI Brands, Inc., 67 USPQ2d 1657 (TTAB 2002).

In this case, it seems that the
Examining Attorney has simply recited various
mechanical rules of construction for
comparing the marks [at issue] and concluded
that the dominant part of Applicant's Mark
consists of the exact three letters as the
Cited Marks. This situation is similar to
the situation in TSI Brands, where the TTAB
found that "such generalizations are
inappropriate in that they fail to take into
proper account the fact that visually the
respective marks contain significant
distinguishing elements and the fact that a
disclaimer does not remove the disclaimed
matter from a mark." Id. Here it is clear
that when the letters "UCS" are not deemed as
[being] dispositive of the issue and when
Applicant's Mark is considered as a whole, as
it should be, there is no likelihood of
confusion between Applicant's Mark and the
Cited Marks.

....

Here, the Examining Attorney seems to
ignore that Applicant's Mark is more than
just a block letter display of the letters
"UCS," and the Cited Marks contain nothing
more than the [same] three letters. The
Examining Attorney incorrectly argues that
"UCS" is the dominant term in Applicant's
Mark and [wrongly] states that the terms
"Dungaree Co." will create less of a
commercial impression in the minds of
consumers than the term "UCS." ....
Moreover, the Examining Attorney completely
ignores the stylized design logo that is used
together with the terms UCS Dungaree Co.
.... Thus, Applicant's Mark and the Cited
Marks create entirely different commercial
impressions and there can be no confusion.

Ser. No. 76567513
7
Referring, furthermore, to the cited registrations as
"third-party registrations," applicant asserts as its second
basic argument concerning why confusion is not likely that
(emphasis and underlining in original):
The existence of third[-]party
registrations demonstrates that the "UCS"
mark is entitled to a narrow scope of
protection. The marks cited against
Applicant['s Mark] herein are owned by
different entities and consist of simply
stylized or typewritten versions of the
letters "UCS". The fact that the trademark
office allowed registration of these marks,
for the same class of goods by different
owners, further supports Applicant's argument
that there is no likelihood of confusion.

Third-party registrations are of use in
evaluating whether there is a likelihood of
confusion if they tend to demonstrate that a
mark is entitled to a narrow scope of
protection. See, e.g., Specialty Brands,
Inc. v. Coffee Bean Distributors, Inc., 748
F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984);
Tektronic, Inc. v. Daktronics, Inc., 534 F.2d
915, 917, 189 USPQ 693, 694-95 (C.C.P.A.
1975); In re Melville Corp., 18 USPQ2d 1386,
1388 (TTAB 1991); In re Dayco Products-
Eaglemotive Inc., 9 USPQ2d 1910, 1911 (TTAB
1988); In re J.M. Originals, Inc., 6 USPQ2d
1393, 1394 (TTAB 1987); United Foods Inc. v.
J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB
1987).

Thus, the fact that there are two very
similar marks already existing side by side
bolsters the fact that neither entity has an
exclusive right to use the letters "UCS" in
Class 25. The Cited Marks are much more
similar to each other in terms of appearance
than they are to Applicant's Mark. Indeed,
while the Cited Marks consist solely of
different stylizations of the letters "UCS",
Applicant's Mark contains a highly stylized
design logo and the words DUNGAREE CO. Thus,
if there is no likelihood of confusion
between the Cited Marks, there can be no
confusion with Applicant's Mark.

Ser. No. 76567513
8
The Examining Attorney, on the other hand, maintains in
her brief that because the marks at issue "are found on identical
or highly related clothing items, and thus that "the degree of
similarity between marks [which is] required to support a finding
of likelihood of confusion is not as great as would apply with
diverse goods or services," confusion is likely inasmuch as
applicant's mark "merely adds descriptive matter and a logo to
the cited UCS registrations," with the term "UCS" forming "the
dominant portion of applicant's mark." Citing In re Code
Consultants Inc., 60 USPQ2d 1699 (TTAB 2001), in which the Board
found that a mark "consisting of 'CCI' plus design with the
descriptive, disclaimed words 'Code Consultants, Inc.' is
confusingly similar to [a] typed drawing mark 'CCI' for similar
services," for the proposition that "the mere addition of
descriptive matter and a design element to a typed, three-letter
acronym for related services gives rise to confusion," the
Examining Attorney argues that, likewise, "[t]he cited UCS
registrations do not contain additional material or a high degree
of stylization" and, therefore, "there is a likelihood that
consumers who encounter the UCS marks in the cited registrations
will confuse the source of registrants' clothing items with
applicant's UCS mark."7

7 While the Examining Attorney also postulates that because "neither of
the registered marks contains additional material that restricts it
from being presented near circular design elements of additional
descriptive wording," the "cited registrations therefore may be
displayed on or near circular logos and language describing clothing
items," it is pointed out that in assessing whether there is a
likelihood of confusion, it is settled that such an issue must be
decided on the basis of the mark which an applicant seeks to register
and the mark(s) shown in the cited registration(s). See, e.g., Sealy,
Ser. No. 76567513
9
In particular, the Examining Attorney asserts that
"[t]he absence of such additional material and stylization in the
cited registrations is critical to understanding why applicant’s
reasoning based on TSI Brands fails," arguing that in such case,
at 67 USPQ2d 1661, "the Board found that using generalized rules
of construction to analyze trademarks is 'inappropriate' where it
'fail[s]'to take into proper account the fact that visually the
respective marks contain significant distinguishing design
elements and the fact that a disclaimer does not remove the
disclaimed matter from the mark'" (emphasis added). Noting,
moreover, that in such case "[m]ark[s] consisting of 'AK' in

Inc. v. Simmons Co., 265 F.2d 934, 121 USPQ 456, 459 (CCPA 1959);
Burton-Dixie Corp. v. Restonic Corp., 234 F.2d 668, 110 USPQ 272, 273-
74 (CCPA 1956); Hat Corp. of America v. John B. Stetson Co., 223 F.2d
485, 106 USPQ 200, 203 (CCPA 1955); and ITT Canteen Corp. v. Haven
Homes Inc., 174 USPQ 539, 540 (TTAB 1972). Thus, the relevant
comparison is between applicant's mark and each of the cited marks as
shown in the registrations and not as to the latter marks if used in
conjunction with any additional matter, which is legally irrelevant
and immaterial to a determination of the issue of likelihood of
confusion.

In addition, the Examining Attorney observes that because one of
the cited marks is in standard character or what was formerly known as
"typed drawing form," it is the case that "[r]egistration of a mark in
typed drawing form means that the mark may be displayed in any
lettering style." While, for instance, it is plain from the case of
Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ
35, 36 (CCPA 1971), that a mark registered in typed or standard
character form is not limited to the depiction thereof in any special
form, the Board in INB National Bank v. Metrohost Inc., 22 USPQ2d 1585
(TTAB 1992), has further indicated that, "[a]s the Phillips Petroleum
case makes clear, when [a party] ... seeks a typed or block letter
registration of its word mark, then the Board must consider all
reasonable manners in which [the word mark] ... could be depicted."
Consequently, while the stylized "UCS" mark, as shown in the other
cited registration, would be one manner of reasonably displaying the
mark "UCS" and is encompassed by the registration thereof in standard
character form, we disagree with the suggestion by the Examining
Attorney that such mark would reasonably include the presentation
thereof in the unusual manner in which those letters are shown in
applicant’s mark, that is, an elongated letter "U" adjacent to two
disproportionately sized smaller letters "C" and "S," but with the
latter letters not running the height of the letter "U."
Ser. No. 76567513
10
highly stylized form within a circular [or oval] design [were]
held not confusingly similar to [a] ... mark consisting of the
terms 'AMERICAN KHAKI' appearing superimposed in the stylized
letters 'AK,'" the Examining Attorney urges that, at 60 USPQ2d
1663, "[t]he Board reasoned that 'the degree of stylization and
integration of the letters forming both of registrant’s 'AK' and
design marks is so high that they are more properly treated ...
as being akin to pure design marks rather than simply stylized
displays of word marks.'" By contrast, the Examining Attorney
insists that (italics in original):
It would be similarly inappropriate in
this case to ignore the absence of a
significant distinguishing design element or
high degree of stylization in the cited
registrations. The absence of such
distinguishing elements places this case more
squarely in line with Code Consultants,
discussed supra. .... In this case, as in
Code Consultants, applicant merely adds
descriptive wording and a logo to the
registered UCS trademarks.

The Examining Attorney, citing In re Burndy Corp., 300
F.2d 938, 133 USPQ 196, 197 (CCPA 1962), in further noting that
"[a] comparison of the visual similarities alone is only
appropriate where the marks are essentially design marks and not
capable of being spoken," additionally argues that the "literal
portions are generally the dominant and most significant features
of marks because consumers will call for the goods or services in
the marketplace by that portion." See, e.g., In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987); and In re
Drug Research Reports, Inc., 200 USPQ 554, 556 (TTAB 1978). "For

Ser. No. 76567513
11
this reason," she points out, "greater weight is often given to
the literal portions of marks in determining whether there is a
likelihood of confusion." In this case, she contends that:
The literal portion of applicant's mark
comprises "UCS DUNGAREE CO." This sounds
confusingly similar to registrants' marks
because it begins with the same three letter
"UCS" as the cited marks. The first three
out of seven syllables in applicant's mark
sound identical to the marks in the cited
registrations. This gives rise to a
likelihood of confusion with the cited ...
UCS [marks] because of the distinctiveness of
the shared term "UCS."

Moreover, as to the "the distinctiveness of the shared term
'UCS,'" which constitutes the entirety of each of the cited
marks, the Examining Attorney maintains that such term is
arbitrary and, on this record, has no meaning other than its
significance as a mark. She specifically asserts, in this
regard, that:
There is no evidence that the terms
"UCS" have [any other] significance in the
clothing field. This creates a strong
commercial impression because UCS is "coined"
or "fanciful" with respect to the identified
clothing items.

As to applicant's mark, she maintains in view of the
above principles that the dominant portion thereof is the phrase
"UCS DUNGAREE CO." inasmuch as (citations omitted):
Applicant's composite mark consists of a
logo and the words UCS DUNGAREE CO. The logo
consists of a circle surrounding an arbitrary
arrangement of letters. The literal portion
of the mark, "UCS DUNGAREE CO.[,]" appears
underneath and apart from the logo. The eye
is drawn to the literal portion for an
explanation of the arbitrary letters in the
circle. The mind then comprehends that the
letters in the logo are a derivation of the
letters "UCS" and the "D" from "DUNGAREE" and
Ser. No. 76567513
12
the "CO," in the literal portion "UCS
DUNGAREE CO."

The literal portion of the mark lends
meaning to the design element and therefore
creates a stronger commercial impression as a
source-indicator than the design element. In
addition, as stated supra, the literal
portion "UCS DUNGAREE CO." is more likely to
be impressed upon a purchaser's memory and to
be used in calling for the goods .... ....

Therefore, the commercial impression,
meaning, and connotation conveyed by the mark
in its entirety is that the goods on which
the mark is found originate from a company
called "UCS DUNGAREE CO."

Nonetheless, because the terms "DUNGAREE CO." in
applicant's mark, due to the disclaimer thereof, "are less
significant or less dominant when comparing applicant's mark to
the [marks in] the cited registrations," the Examining Attorney
urges that it is actually "[t]he term 'UCS' [which] forms the
dominant portion of applicant's mark because it serves as the key
distinguishing identifier of source in the minds of the consumers
who encounter the mark." Giving such term, therefore, greater
weight, the Examining Attorney insists that:
When comparing the [marks of the] cited
registrations and applicant's mark, the marks
all create the highly similar commercial
impression that "UCS" is the source of the
clothing items. This gives rise to the
likelihood that consumers will be confused as
to the source of registrants' and applicant's
goods because the shared term "UCS" forms the
dominant portion of applicant's mark and
comprises the entirety of the [marks of] the
cited registrations. ....

With respect to applicant's argument, however, that
because the two cited marks "are currently registered for use on
similar clothing items," such marks are properly entitled to only
Ser. No. 76567513
13
a narrow scope of protection, the Examining Attorney asserts
that:
First, prior decisions and actions of
other trademark examining attorneys in
registering different marks are without
evidentiary value and are not binding upon
the Office. Each case is decided on its own
facts, and each mark stands on its own
merits. AMF Inc. v. American Leisure
Products, Inc., [474 F.2d 1403,] 177 USPQ
268, 269 (C.C.P.A. 1973); In re International
Taste, Inc., 53 USPQ2d 1604, 1606 (TTAB 2000)
("[W]hile the Office strives for consistency,
the Board must decide each case on its own
facts and record"); In re Sunmarks Inc., 32
USPQ2d 1470 (TTAB 1994); In re National
Novice Hockey League, Inc., 222 USPQ 638, 641
(TTAB 1984); In re Consolidated Foods Corp.,
200 USPQ 477 (TTAB 1978). For the Board to
permit the decision of an examining attorney,
whose reasons for allowing the second UCS
registration are not of record, to bind it
would violate the Board's statutory duties.
In re Sunmarks Inc., 32 USPQ2d at 1472. ....

Second, applicant urges that "the
existence of the 3rd [sic] party
registrations demonstrates that the 'UCS'
mark is entitled to a narrow scope of
protection." .... First, it should be noted
that these are not "third party"
registrations, these are the cited
registrations. Second, the case law is clear
that the co-existence of confusing
registrations on the Register does not
warrant registration of yet another mark that
is likely to cause confusion. NASA v. Record
Chemical Co. Inc.[,] 185 USPQ 563, 567 (TTAB
1975). That there may be confusion on the
register is no excuse to add to it. Plus
Products v. Star-Kist Foods, Inc., 220 USPQ
541, 544 (TTAB 1983).

The Examining Attorney concludes, in summary, that
confusion is likely because:
Applicant's mark and the marks in the
cited registrations are found on highly
related and identical goods in the same trade
channels. The marks are confusingly similar
in appearance, sound, commercial impression,
Ser. No. 76567513
14
meaning and connotation because the marks
share the same distinctive, arbitrary term
"UCS." The cited registrations are comprised
entirely of the term "UCS" and do not contain
additional design material or a high degree
of stylization that obviates a likelihood of
confusion, mistake or deception. Applicant's
mere addition of highly descriptive language
and a logo to the cited registrations does
not obviate the likelihood that consumers
will be confused, mistaken, or deceived as to
the source of the identified goods.

Although we candidly admit that the issue in this
appeal is a close one, after careful consideration of the above
arguments we are constrained to agree with the Examining Attorney
that confusion is likely. As our principal reviewing court has
noted, while marks which are at issue must be considered in their
entireties, including any descriptive or other disclaimed matter
therein, it is also the case that, in articulating reasons for
reaching a conclusion on the issue of likelihood of confusion,
"there is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature of a
mark, provided [that] the ultimate conclusion rests on
consideration of the marks in their entireties." In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
For instance, according to the court, "that a particular feature
is descriptive [or otherwise lacking in distinctiveness] ... with
respect to the involved goods ... is one commonly accepted
rationale for giving less weight to a portion of a mark ...."
Id. Clearly, if applicant's mark were simply the phrase "UCS
DUNGAREE CO.," there would be no question that contemporaneous
use thereof in connection with, for example, applicant's coats,
footwear, jackets, pants, skirts and headwear would be likely to
Ser. No. 76567513
15
cause confusion with the use both of the stylized "UCS" mark for,
among other items, coats, footwear, jackets, pants, skirts, hats
and visors, and the standard character form "UCS" mark for, inter
alia, leather shoes, boots, lounge shoes and sports shoes. The
term "UCS," on this record, is arbitrary; there is no evidence of
any third-party use of such term in connection with articles of
clothing; and the language "DUNGAREE CO." in applicant's mark is
essentially without source-indicative significance, given its
descriptiveness in relation to a company which markets dungarees
and apparel for wearing with such goods.
On the other hand, it is plain that if applicant's mark
were limited to the logo design element, there would be little if
any doubt that contemporaneous use of such a design by applicant,
even on items of clothing identical in kind to those of each of
the cited registrants, would not be likely to cause confusion
with either of the cited "UCS" marks. The letters "U" and "D" in
the logo design are much larger in size and hence more prominent
than even the letter "S," which in turn is appreciably larger and
thus more noticeable than either the letter "C" or the term "CO."
As a result, upon first viewing, the logo design looks very
little like the letters "UCS," which comprise the registered
marks. The logo design, instead, appears overall to consist
primarily of, for instance, the stylized term "USD," with the
letter "C" and the term "CO." serving as subordinate matter,
rather than being readily recognizable for what it actually is,
Ser. No. 76567513
16
specifically, a composite abbreviation for, or shortened form of,
the name "UCS DUNGAREE CO."8
The problem essentially presented by this appeal,
however, is: What is the overall commercial impression which is
engendered when the phrase "UCS DUNGAREE CO." is combined with
the logo design so as to form the mark for which applicant is
seeking registration? Considered in its entirety, it is true
that the logo design is undeniably a visually prominent feature
of applicant's mark, but the phrase "UCS DUNGAREE CO." also
stands out visually and is not without source-indicative
significance. In particular, such phrase is not so relatively
small or otherwise buried in applicant's mark that it would fail
to be readily noticed. Most importantly, such phrase serves to
clarify that what, in the logo, might at first glance be any
random combination of the letters therein, is instead a composite
abbreviation for, or shortened form of, the name "UCS DUNGAREE
CO." Moreover, the arbitrary initialism "UCS" in such phrase is
itself a significant indication of source, given the inherent
descriptiveness of the words "DUNGAREE CO." Inasmuch as such
initialism is identical to the cited standard character form
"UCS" mark and to the principal source-indicative element of the
stylized "UCS" mark, applicant's mark overall so resembles the
cited marks that, when used in connection with identical and
otherwise closely related items of apparel, confusion as to

8 Due to the placement and relative sizes thereof, the arrangement of
the letters in the logo is confusing in the abstract and such
arrangement could, arguably, be instead taken for other letter
combinations such as "USCD CO.," "UCSD CO." or even "UCDS CO."

Ser. No. 76567513
17
source or sponsorship is likely to occur. That is, even though
the logo design in applicant's mark is very prominent and thus is
certain to be noticed, it is not sufficient to distinguish
applicant's mark from either of the cited "UCS" marks in light of
the identical, arbitrary term "UCS" which also prominently
appears in applicant's mark as part of the phrase "UCS DUNGAREE
CO."
As to applicant's chief reliance, nonetheless, upon TSI
Brands for the proposition that the disclaimed terms "DUNGAREE
CO." serve as significant features of its mark and, like the logo
design therein, meaningfully distinguish such mark from the cited
"UCS" marks, we find the quotation in applicant's brief from the
Board's opinion in such case, specifically, that "[t]here is no
ironclad rule that disclaimed matter will be disregarded as the
dominant or most significant feature of a mark," to be extremely
misleading. That quotation, as is clear from the Board's opinion
at 67 USPQ2d at 1661, is actually an argument by the applicant in
such case as recounted by the Board rather than, as applicant
implies herein, a pronouncement or reasoning expressed by the
Board in resolving the issue which was then before it.
Furthermore, and in any event, we concur with the Examining
Attorney that TSI Brands plainly is distinguishable from this
appeal because the cited marks therein were "more than merely
stylized presentations of the letters 'AK'." 67 USPQ2d at 1661.
Rather, as the Board was careful to point out, "the degree of
stylization and integration of the letters forming both of
registrant's 'AK" and design marks is so high that they are akin
Ser. No. 76567513
18
to pure design marks rather than simply stylized displays of word
marks ...." 67 USPQ2d 1663. Here, by sharp contrast, neither of
the cited "UCS" marks is in essence a pure design mark; rather,
such marks literally are simply the letters which form the
initialism "UCS"--which is the identical initialism which appears
in the phrase "UCS DUNGAREE CO." in applicant's mark.
Concerning, furthermore, applicant's contention that
marks which consist of or include the initialism "UCS" must be
considered weak marks, as evidenced solely by the coexistence of
the two cited "UCS" marks, which are entitled only to a narrow
scope of protection, we agree with the Examining Attorney that
such argument is without merit. Among other things, even if it
could be said that the "evidence" referred to by applicant is
sufficient to establish the weakness of the marks at issue
herein, weak marks are still entitled to protection against
registration by a subsequent user of the same or similar mark for
the same or closely related goods or services. See, e.g.,
Hollister Inc. v. Ident A Pet, Inc., 193 USPQ 439, 442 (TTAB
1976).
Additionally, the Examining Attorney is correct that
the cited registrations are not, technically speaking, "third-
party registrations," which is a term of art in trademark law
that refers to registrations owned by others that have, in
pertinent part, the same or similar characteristics to a cited
registration or an applicant's mark but which, of course, are not
entirely identical thereto (e.g., registrations for the same mark
for similar goods or services or registrations for similar marks
Ser. No. 76567513
19
for identical goods or services). Nevertheless, even if the two
cited registrations were to be considered as somehow analogous to
third-party registrations, it is well established that in any
event third-party registrations do not demonstrate use of the
marks which are the subjects thereof in the marketplace or that
the consuming public is familiar with the use of those marks and
has learned to distinguish between them based on the differences
therein. See, e.g., Smith Brothers Manufacturing Co. v. Stone
Manufacturing Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973);
and AMF Inc. v. American Leisure Products, Inc., supra. Third-
party registrations, by themselves, are thus entitled to little
weight on the issue of likelihood of confusion. See, e.g., In re
Melville Corp., supra; and In re Hub Distributing, Inc., 218 USPQ
284, 285 (TTAB 1983). Finally, as our principal reviewing court
pointed out in In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001), "[e]ven if some prior registrations
had some characteristics similar to [applicant's] application,
the ... allowance of such prior registrations does not bind the
Board or this court." See also, In re Broyhill Furniture
Industries Inc., 60 USPQ2d 1511, 1514 (TTAB 2001); and In re
Pennzoil Products Co., 20 USQP2d 1753, 1758 (TTAB 1991).
We accordingly conclude that customers and prospective
consumers who are familiar or acquainted with either the stylized
"UCS" mark for, among other items, coats, footwear, jackets,
pants, skirts, hats and visors, or the standard character form
"UCS" mark for, inter alia, leather shoes, boots, lounge shoes
and sports shoes, would be likely to believe, upon encountering
Ser. No. 76567513
20
applicant's similar "UCS DUNGAREE CO." and design mark for items
of apparel which include coats, footwear, jackets, pants, skirts
and headwear, that such legally identical goods emanate from, or
are sponsored by or associated with, the same source. In
particular, even though customers and prospective consumers would
undoubtedly notice the logo design element of applicant's mark in
addition to the phrase "UCS DUNGAREE CO." therein, they still
would be likely to believe that such mark, when used in
connection with goods which are legally identical to those of
each of the cited registrants, constitutes a new or expanded line
of apparel from the same source as either the goods offered under
the stylized "UCS" mark or the products marketed under the
standard character form "UCS" mark. To the extent, however, that
there could be any doubt as to our conclusion in this regard, we
resolve such doubt, as we must, in favor of each of the cited
registrants. See, e.g., In re Chatam International Inc., 380
F.3d 1340, 71 USPQ2d 1944, 1948 (Fed. Cir. 2004); In re Martin's
Famous Pastry Shoppe, Inc., 748 F.2d 156, 223 USPQ 1289, 1290
(Fed. Cir. 1984; and In re Pneumatiques Caoutchouc Manufacture et
Plastiques Kelber-Columbes, 487 F.2d 918, 179 USPQ 729, 729 (CCPA
1973).
Decision: The refusal under Section 2(d) is affirmed.