Wolford AG

Trademark Trial and Appeal Board

Jun 22, 2001

No. 75477297 (T.T.A.B. Jun. 22, 2001)

06/22/01 Paper No. 16
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Wolford Aktiengesellschaft
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Serial No. 75/477,297
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Karl Hormann of the Law Offices of Karl Hormann for Wolford
Aktiengesellschaft.
Michael W. Baird, Trademark Examining Attorney, Law Office 109
(Ronald R. Sussman, Managing Attorney).
_______
Before Seeherman, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Wolford Aktiengesellschaft has filed an application to
register the mark "FATAL," in the stylized manner shown below,
for "articles of clothing, namely, ladies' underwear and
hosiery."1
1 Ser. No. 75/477,297, filed on April 30, 1998, which is based on an
allegation of a bona fide intention to use the mark in commerce and a
claim of ownership of Austrian Reg. No. 160,227.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/477,297
2
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 the
mark "NEAR FATAL," which is registered for "clothing, namely, T-
shirts, sweatshirts, jerseys, hats and shorts,"2 as to be likely
to cause confusion, mistake or deception.3
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
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 of the
goods and the similarity of the marks."4
2 Reg. No. 2,205,162, issued on November 24, 1998, which sets forth a
date of first use anywhere of May 20, 1997 and a date of first use in
commerce of June 6, 1997.
3 Inasmuch as Section 2(d), inter alia, prohibits registration of "a
mark which so resembles a mark registered in the Patent and Trademark
Office," applicant's unsubstantiated assertion that it has priority of
use over registrant's claimed date of first use in commerce because
"its stylized word mark 'FATAL' ... has been in continued commercial
use in the United States since 1996" is irrelevant. See, e.g. In re
Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971) [priority of
use is not germane to an applicant's right to register in an ex parte
proceeding].
4 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."
Ser. No. 75/477,297
3
Turning first to consideration of the respective goods,
applicant argues that it "caters exclusively to an upscale market
and to this end maintains retail shops [for its goods] in such
places as Madison Avenue in New York City and Rodeo Drive in
Beverly Hills, California, among many other sites known for their
exclusivity." By contrast, applicant asserts that the cited
registration "covers significantly different goods ... of a kind
not likely seen by that section of the consuming public which
prefers not to shop in the kind of establishments where such
goods are ordinarily sold."
The Examining Attorney, however, correctly points out
that it is well settled that the issue of likelihood of confusion
must be determined on the basis of the goods as they are set
forth in the involved application and cited registration. See,
e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed.
Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
940 (Fed. Cir. 1983); and Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Thus, where the goods in the application at issue and in the
cited registration are broadly described as to their nature and
type and, as is the case herein, there are no restrictions in the
respective identifications of goods as to their channels of trade
or classes of customers, it is presumed in each instance that the
application and registration encompass not only all goods of the
nature and type described therein, but that the identified goods
move in all channels of trade which would be normal for such
Ser. No. 75/477,297
4
goods and that they would be purchased by all potential buyers
thereof. See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
No weight, therefore, may be given to applicant's
contention that its ladies' underwear and hosiery are sold in
different channels of trade than registrant's T-shirts,
sweatshirts, jerseys, hats and shorts. Instead, as pointed out
by the Examining Attorney, applicant's and registrant's goods
must be considered suitable for sale in the same channels of
trade, such as retail clothing shops and department stores, and
that the same classes of purchasers, including women, shop for
such items of apparel.
Furthermore, while applicant's goods are specifically
different from registrant's goods, it is well established that
goods need not be identical or even competitive in nature in
order to support a finding of likelihood of confusion. It is
sufficient, instead, that the goods are related in some manner
and/or that the circumstances surrounding their marketing are
such that they would be likely to be encountered by the same
persons under situations that would give rise, because of the
marks employed in connection therewith, to the mistaken belief
that they originate from or are in some way associated with the
same producer or provider. See, e.g., Monsanto Co. v. Enviro-
Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
In the present case, we agree with the Examining
Attorney that the various third-party registrations which were
Ser. No. 75/477,297
5
made of record with the final refusal are sufficient to establish
that applicant's goods, while specifically different from
registrant's goods, are nevertheless so closely related thereto
that, if sold under the same or similar marks, a likelihood of
confusion as to the origin or affiliation of the respective goods
would result. In this regard, the Examining Attorney has
introduced in support of his position copies of ten use-based
third-party registrations of marks which, in each instance, are
registered for one or more of registrant's goods, on the one
hand, and one or both of applicant's goods on the other.
Although the third-party registrations are not evidence that the
different marks shown therein are in use or that the public is
familiar with them, they nevertheless have some probative value
to the extent that they serve to suggest that the goods listed
therein are of a kind which may emanate from a single source.
See, e.g., In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993) and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1470 (TTAB 1988) at n. 6.
In addition, with the final refusal, the Examining
Attorney has made of record pages from several catalog excerpts
"demonstrating that the goods in question are often sold through
the same retail channels, and that purchasers are accustomed to
seeing the goods sold together." In light of the above evidence,
as well as the previously noted lack of any restrictions or
limitations in the identifications of both applicant's and
registrant's goods, we concur with the Examining Attorney that
"[b]ecause the goods in question ... consist of items of apparel,
Ser. No. 75/477,297
6
target the same consumers, and travel through the same channels
of trade, they must be considered closely related." The
marketing thereof under the same or substantially similar marks
would accordingly be likely to cause confusion.
Turning, therefore, to consideration of the respective
marks, applicant argues that there are "obvious physical, visual
and phonetic differences, as well as differences in perception,
between the two marks."5 According to applicant:
The Examining Attorney has said, in effect,
that a single blue line, for instance is
confusingly similar to a compound yellow and
blue line. Plainly, there is ... certainly
no confusing similarity between such lines.
One is tempted to invoke other analogies of
striking dissimilarity between the two marks,
such as, for instance, a fatal accident and a
near fatal accident. If instead of FATAL,
Appellant's mark had been "1" and the
5 Applicant also contends, among other things, that:
Appellant had previously applied for registration of
its instant mark on the principal register by an intent-to-
use application filed 8 February 1996 under Serial No.
75/055,426. That application was allowed over the mark
"FATAL ATTRACTION" (Registration No.: 1600755), on 19
August 1997 in view of the prima facie dissimilarity
between the two marks .... However, because of an
unfortunate chain of events, Appellant's Allegation of Use
was not timely filed, and the application thus became
abandoned.
However, as the Examining Attorney, citing In re National Novice
Hockey League, Inc., 222 USPQ 638, 639 (TTAB 1984), notes in his brief
in response, "previous decisions of examiners allowing other marks are
without evidentiary value and are not binding upon the [United States]
Patent and Trademark Office or the ... Board" since each case "must be
decided on its own merits." More importantly, we observe that the
registration cited herein as a bar under Section 2(d) would not have
likewise served, in light of the conflicting marks provisions of
Trademark Rule 2.83(a), as a bar to applicant's previous application
inasmuch as the June 9, 1997 filing date of the underlying application
for such registration is obviously subsequent to the filing date which
applicant alleges for its previous application. Thus, there has been
no inconsistency in the ultimate treatment of applicant's previous
application and its current application insofar as the statutory bar
of Section 2(d) is concerned.
Ser. No. 75/477,297
7
opposing mark were "21", their dissimilarity
would also have to go unquestioned.
However, as the Examining Attorney persuasively points out:
[I]n the case at hand, the marks contain
neither lines nor numbers. The analogies are
simply inappropriate. Likewise, while the
examining attorney agrees that there are
substantial differences between a fatal
accident and a nearly fatal accident, the
marks in question are not identifying types
of accidents. Instead they are used to
identify articles of clothing. Because the
term NEAR FATAL is arbitrary when used in
conjunction with clothing, it is a "strong"
mark and must be granted a relatively broad
scope of protection.
In addition, the Examining Attorney asserts that the
absence from applicant's "FATAL" mark of the term "NEAR" in
registrant's "NEAR FATAL" mark "is insufficient to overcome a
likelihood of confusion under Section 2(d) because "the deleted
wording is not a dominant element of the mark." The Examining
Attorney maintains, instead, that the dominant portion of
registrant's mark is the word "FATAL" inasmuch as the word "NEAR"
"is merely an adverb which modifies the term FATAL, and has no
separate commercial impression." With respect to applicant's
mark, the Examining Attorney insists that the "design element ...
is undistinguished, and has little, if any commercial value" and
that it is the word "FATAL" which "is more likely to be impressed
upon a purchaser's memory and to be used in calling for the goods
...."
When the marks at issue are considered in their
entireties, we agree with the Examining Attorney that the
contemporaneous use thereof in connection with closely related
items of clothing is likely to cause confusion. The shared
Ser. No. 75/477,297
8
presence of the word "FATAL" in applicant's stylized "FATAL" mark
and in registrant's "NEAR FATAL" mark results in marks which are
substantially similar overall in sound, appearance, connotation
and commercial impression. The rectangular design in applicant's
mark is clearly subordinate matter inasmuch as it serves simply
as a background for the display of the term "FATAL," which as the
sole literal element in the mark would be used by consumers and
prospective customers in asking about applicant's ladies' hosiery
and underwear. See, e.g., In re Appetito Provisions Co. Inc., 3
USPQ2d 1553, 1554 (TTAB 1987). The stylization of such term,
moreover, fails to distinguish applicant's mark since the typed
drawing format in which registrant's "NEAR FATAL" mark is
registered encompasses the display of such mark in any reasonable
manner, including the same lower case lettering and font style as
used by applicant for its mark. See, e.g., Phillips Petroleum
Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA
1971) and INB National Bank v. Metrohost Inc., 22 USPQ2d 1585,
1588 (TTAB 1992). Furthermore, while lacking the rectangular
background of applicant's mark, in actual use registrant's mark
could certainly be depicted in the same or a similar fashion,
such as a display on a dark-colored background. In terms of
sound and appearance, therefore, the respective marks are
substantially similar in their entireties.
With respect to connotation and commercial impression,
it is true, as the Examining Attorney concedes, that there is
indeed a significant difference between something being "fatal"
and it being only "near fatal," at least insofar as death is
Ser. No. 75/477,297
9
concerned. However, when such arbitrary terms are used in
connection with items of apparel instead of in the abstract,
applicant's "FATAL" mark and registrant's "NEAR FATAL" mark are
substantially similar in overall connotation and commercial
impression.
We accordingly conclude that purchasers and potential
customers, who are familiar or acquainted with registrant's "NEAR
FATAL" mark for its T-shirts, sweatshirts, jerseys, hats and
shorts, would be likely to believe, upon encountering applicant's
substantially similar stylized "FATAL" mark for its ladies'
underwear and hosiery, that such closely related items of
clothing emanate from, or are sponsored by or associated with,
the same source. Furthermore, even assuming that such consumers
would notice the difference in the respective marks, it would
still be reasonable for them to believe, for example, that
applicant's stylized "FATAL" mark for its ladies' underwear and
hosiery designates a new or additional product line emanating
from, or sponsored by, the same source as the T-shirts and
various other outerwear garments offered by registrant under its
"NEAR FATAL" mark.
Decision: The refusal under Section 2(d) is affirmed.