U.S. Top Importers, Inc.

Trademark Trial and Appeal Board

Jun 11, 2010

No. 77425141 (T.T.A.B. Jun. 11, 2010)

For

Mailed:
June 11, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re U.S. Top Importers, Inc.
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Serial No. 77425141
_______

JungJin Lee of Lee, Lee & Associates, P.C. for U.S. Top
Importers, Inc.

Doritt Carroll, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Hairston, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:
On March 18, 2008, U.S. Top Importers, Inc. filed an
application to register the trademark VIOLIN (in standard
character form) on the Principal Register for goods now
identified as “clothing, namely, women's blouses, tank
THIS OPINION IS NOT
A PRECEDENT
OF THE T.T.A.B.
Serial No. 77425141
2
tops, t-shirts, sweaters, skirts, pants” in International
Class 25.1
The examining attorney refused registration of the
application pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark VIOLA (in standard character form) of
Registration No. 3387513 (issued on February 26, 2008), for
“dresses,” in International Class 25, that, as used on
applicant’s identified goods, applicant's mark is likely to
cause confusion or mistake or to deceive.
Applicant has appealed the final refusal, and both
applicant and the examining attorney have filed a brief.
We affirm the refusal to register.
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, although not exclusive, considerations

1 Application Serial No. 77425141, claiming first use of the mark
anywhere and first use of the mark in commerce on February 22,
2008.

Serial No. 77425141
3
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 Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In this case,
we focus on the factors concerning the similarities of the
marks and the goods, because they are the only factors
discussed by the examining attorney and applicant in their
briefs.
We first turn to the marks. Our focus is on whether
the marks are similar in sound, appearance, meaning, and
commercial impression. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). We do not consider whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar 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).
Both registrant’s and applicant’s marks are one word
marks with three syllables that have the same initial four
Serial No. 77425141
4
letters, namely V-I-O-L. Not only are they the names of
musical instruments, they are the names of string musical
instruments that look very much alike. See the depictions
of a violin and a viola submitted into the record by
applicant with its June 24, 2009 request for
reconsideration, taken from the “Wikimedia Commons” and the
“SoundJunction” websites. Additionally, the online edition
of Merriam-Webster Dictionary, which applicant made of
record, defines “viola” as “a musical instrument of the
violin family that is intermediate in size and compass
between the violin and cello and is tuned a fifth below the
violin.” This definition of “viola” specifically mentions
a violin and defines a viola in the context of a violin,
indicating a strong relationship between the instruments;
consumers would likely associate one instrument with the
other. We therefore find that the marks are similar in
appearance and meaning. Regarding the commercial
impression of the marks, in view of the fact that both
marks refer to musical string instruments and are similar
in appearance due to the shared letters V-I-O-L, we find
too that the marks are similar in commercial impression.
At this point, we address two of applicant’s arguments
regarding the marks. First, applicant argues that its mark
should be registered because the registered mark VOILÀ!
Serial No. 77425141
5
(Registration No. 3304143) for “Hosiery; Lingerie,” which
is of record, and VIOLA “share the same letters and their
appearance are [sic] virtually identical, yet both marks
co-exist without issue.” We are not persuaded by this
argument; VIOLA may have registered because the meaning and
commercial impression of VIOLA and VOILÀ! are entirely
different.
Second, applicant has made of record (i) a definition
of “viola” from the Online Edition of Merriam Webster
Dictionary, namely, a violet, i.e., a type of flower; and
(ii) Registration No. 1827540 for the mark VOILETS for
“adult and children[‘s] clothing; namely, T-shirts,
sweatshirts, and pants, shorts, jackets, sweaters, hats,
shoes.” According to applicant, “‘Viola’ would be more
reasonably viewed as giving the same overall impression to
the average purchaser as ‘Violets’; “they are more closely
related in nature, or as closely related, both being
flowers, than ‘Viola’ and ‘Violin,’ as are musical
instruments”; and the fact that both VIOLA and VIOLETS are
registered for clothing “weighs in favor of the applicant’s
registration of Violin because the average consumer would
more likely confuse ‘Viola’ and ‘Violets’ than ‘Viola’ and
‘Violin,’ and ‘Viola’ and ‘Violets’ are both registered.”
Brief at 4. We need not determine which mark presents a
Serial No. 77425141
6
greater likelihood of confusion in this case. We need only
determine whether there is a likelihood of confusion
between applicant's and registrant’s marks. While there
may be potential consumers who consider “viola” to mean
“violet,” such consumers would also be aware that a viola
is a musical instrument. Also, there are even others who
would not know the “violet” meaning of the term but would
think that a “viola” is a musical instrument.2
Turning next to the sound of the marks, we acknowledge
that there are differences. However, the differences in
sound do not outweigh the similarities in meaning,
appearance and commercial impression.
In view of the foregoing, we resolve the du Pont
factor regarding the similarity of the marks against
applicant.

2 Applicant adds that if the consumer “know[s] the instruments in
an orchestra or within the string family, then the general
impression would not lead to the likelihood of confusion as to
the source of goods because the average consumer would know that
the instruments are different in size, shape, and sound.” Id. at
4. The point is not that consumers would come to the realization
that there are differences between violins and violas. The point
is that consumers would consider the source of applicant's and
registrant’s goods to be the same in view of the marks, which are
both the names of musical instruments, and particularly string
instruments. Moreover, those consumers who would appreciate the
differences between a violin and a viola could consider both
applicant's and registrant’s goods to be part of a line of
clothing named after musical instruments.
Serial No. 77425141
7
We turn then to the du Pont factor regarding the
similarity or dissimilarity of the goods. Applicant has
not discussed this factor in its brief.
To support a finding of likelihood of confusion, it is
not necessary that these goods be identical or even
competitive. That is, 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. See In re
Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods need only
be sufficiently related that consumers would be likely to
assume, upon encountering the goods under similar marks,
that the goods originate from, are sponsored or authorized
by, or are otherwise connected to the same source. See In
re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Both applicant's and registrant's goods are common
clothing items which would be found in common clothing
stores. Further, the examining attorney has submitted six
webpages which offer for sale “dresses” and one or more of
Serial No. 77425141
8
the clothing items set forth in applicant's identification
of goods, under the same mark. See, e.g.:3

Thus, with this evidence, we find that the examining
attorney has established that the goods are related, and
resolve the du Pont factor regarding the goods against
applicant.
We now consider applicant’s argument at the end of its
brief regarding the “history of the USPTO’s registered
marks in International Class 025 [which] weighs in favor of
no likelihood of confusion between the Applicant’s and

3 From southmoonunder.com, accessed April 6, 2009.
Serial No. 77425141
9
Registrant’s marks.” Brief at 5. Applicant maintains that
because the Office has registered both CELLO and DE CELLO,4
applicant's mark should be registered for the recited goods
in International Class 25. “Even though these marks are
both for identical instruments and both look and sound the
same but for the addition of one Spanish proposition, they
are both registered trademarks in International Class 025.
The registration of marks that share the same word for the
same exact instrument would not be upsetting precedent to
allow registration of two marks that denote different
instruments altogether.” Id. at 6. Applicant also points
to the registrations for (i) VIOLETS and VIOLA, and (ii)
VOILÀ! and VIOLA, all for goods in International Class 25.
As noted earlier in this decision, VIOLA and VOILÀ!
create different commercial impressions. The co-existence
on the register of the VIOLETS and VIOLA marks can be
explained because VIOLA also identifies a musical

4 The printout from the Office’s TESS database on which applicant
relies regarding the existence of registrations for CELLO and DE
CELLO, does not show the goods identified in each registration.
However, the examining attorney has stated that the marks are for
“identical items of clothing.” We consider these registrations
for what the examining attorney has considered them, i.e., for
identical items of clothing. But because we do not know what
items of clothing they are for, they have limited probative
value. The better practice would have been for applicant to have
provided the registration record for each registration, rather
than the list of TESS search results.
Serial No. 77425141
10
instrument, not just a flower.5 As for CELLO and DE CELLO,
the co-existence on the register of these two marks does
not compel us to reach a different result. While the USPTO
strives for consistency of examination, as often noted by
the Board, each case must be decided on its own merits. We
are not privy to the records of the other registrations,
and moreover, the determination of the registrability of
different marks by a trademark examining attorney cannot
control the results in the case now before us. See In re
Nett Designs Inc., 236 F.2d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001) (“Even if some prior registrations had
some characteristics similar to [applicant's] application,
the PTO's allowance of such prior registrations does not
bind the board or this court.”). Thus, applicant’s
argument at the end of its brief regarding the “history of
the USPTO’s registered marks in International Class 025” is
not persuasive.
When we consider the record, the similarity of the
marks and goods, and all of applicant's arguments relating
thereto, including any arguments not specifically addressed
herein, we conclude that, when potential purchasers of

5 The co-existence of these two marks undercuts applicant's
argument that consumers will define “viola” as “violet” (a
flower).
Serial No. 77425141
11
registrant’s dresses encounter applicant's clothing goods,
they are likely to believe that the sources of these goods
are the same or in some way related or associated. As a
result, there is a likelihood of confusion.
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act is affirmed.