THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Paper No. 17
RFC
Mailed: May 22, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Jose y Carlos Romano Hnos, SA.
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Serial No. 75/787,161
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John R. Crossan of Chapman and Cutler for Jose y Carlos
Romano Hnos, SA.
Henry Zak, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Simms, Cissel and Holtzman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On June 27, 1999, applicant filed the above-referenced
application to register the mark shown below
on the Principal Register for “clothing,” in International
Class 25.
The basis for filing the application was
applicant’s assertion that it possessed a bona fide
Ser No. 75/787,161
intention to use mark in commerce in connection with the
identified goods.
In addition to requiring a more definite
identification-of-goods clause and a disclaimer of the
descriptive term “JEANS,” apart from mark as shown, the
Examining Attorney refused registration under Section 2(d)
of the Lanham Act, 15 U.S.C. Section 1052(d), on the ground
that if applicant’s mark were to be used in connection with
clothing, it so resembles the mark shown below,
which is registered1 for “wearing apparel for men, women,
children and infants-namely, infants’ two piece coordinated
sets consisting of tops with bloomers or tailored shorts,
shorts, slacks, knit and woven tops, overalls, bib overalls
with snap crotch, romper sets, sunsuits with ruffled seats,
and sunsuits; children’s tops, shorts, slacks, bib overalls
with snap crotch, overalls, sun dresses, sunsuits, sunsuits
with ruffled seats, romper sets, two piece coordinated sets
consisting of tops with bloomers or tailored shorts,
1
Reg. No. 1,140, 430, issued on the Principal Register to Stone
manufacturing That Co., a South Carolina corporation, on Oct. 14,
1980, and subsequently renewed.
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Ser No. 75/787,161
athletic tops and shorts; ladies’ and girls’ lingerie,
including gowns, lingerie sets, half slips, slips, panties,
sleep shirts, pajama sets, camisole tops and robes; men’s
underwear, including boxers and tailored shorts and men’s
athletic wear-namely, track, athletic and running shorts,
sport tops and warm-up jackets,” that confusion would be
likely.
He reasoned that the dominant portion of the mark
applicant seeks to register is the same word that is the
registered mark in its entirety, and that the goods with
which applicant intends to use the mark are either the same
as, or are closely related to, the goods specified in the
cited registration.
Applicant responded to the first Office Action with a
disclaimer of the word “JEANS” apart from the mark as shown
and argument on the issue of likelihood of confusion, but
applicant did not address the requirement for a more
definite identification-of-goods clause.
In support of
applicant’s contention that confusion with the cited
registered mark would not be likely, applicant submitted a
listing obtained from the United States Patent & Trademark
Office’s Trademark Text and Image Database of seventy-one
registered trademarks and forty-one marks for which
applications to register had been filed.
Each of these
marks includes the word “STONE,” and, although the goods
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Ser No. 75/787,161
listed in the various applications and registrations are
not specified, all are designated as being in Class 25.
The clothing items specified in the application, as
subsequently amended, and those listed in the cited
registration are also classified in Class 25.
examples of these marks are as follows:
Typical
CAPSTONE,
STONEWEAR DESIGNS, STONE BAY, CORNER STONE, BLACKSTONE,
GRIND STONE UNIVERSAL, ONE SMOOTH STONE, STONERICH, STONE
HAVEN and STONEBRIDGE.
on the list.
These are just the first ten marks
Each mark on applicant’s list combines the
word “stone” with at least one other term or letter.
Applicant took the position that this evidence demonstrates
that “stone” is weak and lacks source-identifying
significance.
Additionally, applicant argued that the mark
applicant seeks to register, when considered in its
entirety, is not similar to the cited registered mark.
The Examining Attorney advised applicant that its
response was incomplete because it did not address the
requirement for a more definite identification-of-goods
clause, and allowed applicant additional time in which to
do so.
Applicant timely submitted an amendment to the
application, specifying the goods with which it intends to
use the mark as follows: “clothing, namely jeans, jackets,
vests, shirts, shoes, tennis shoes, boots, belts,
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Ser No. 75/787,161
underwear, and accessories for sports and professional
wear.”
The Examining Attorney found the wording “accessories
for sports and professional wear” to be unacceptably
indefinite, and additional amendment to specify the
commercial names of these goods was required.
Applicant’s
arguments on the issue of likelihood of confusion were
considered, but the refusal to register under Section 2(d)
the Lanham Act was maintained.
Applicant responded by amending the identification-ofgoods clause to the following: “clothing, namely jeans,
jackets, vests, shirts, shoes, tennis shoes, boots, belts,
and underwear,” in Class 25.
Along with this amendment,
applicant filed a Notice of Appeal from the final refusal
to register under Section 2(d) of the Act.
The Board instituted the appeal, but suspended action
on it and remanded the application to the Examining
Attorney for consideration of the amendment.
He accepted
the amended identification of the goods, but maintained the
final refusal to register based on likelihood of confusion
under Section 2(d).
Submitted with this Office Action were
copies of third-party registrations obtained from Patent
and Trademark Office official records showing that various
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Ser No. 75/787,161
businesses have registered their marks for a wide variety
of clothing items for men, women and infants.
Applicant timely filed its appeal brief, the Examining
Attorney filed his brief on appeal,2 and applicant filed a
reply brief.
Applicant did not request an oral hearing
before the Board, so we have resolved this appeal based on
the written record and the arguments presented by applicant
and the Examining Attorney in their respective briefs.
Based on careful consideration of this record and
these arguments, we hold that if applicant were to use the
mark it seeks to register on the goods identified in the
application, as amended, confusion with the cited
registered mark would be likely.
The test for determining whether confusion is, or will
be, likely is well settled.
In its opinion in In re E. I.
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973), the predecessor to our primary reviewing court
enunciated a number of factors to be considered in
resolving this issue.
Chief among them are the
similarities between the marks and the similarities between
2
Copies of ten third-party registrations of marks which include
the word “stone” were attached to applicant’s brief. Ordinarily,
the Board would not consider such evidence under Trademark Rule
2.142(d), but because the Examining Attorney did not object to
its consideration, and in fact addressed its probative value in
his brief, we have considered it as if he had stipulated to its
admission.
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Ser No. 75/787,161
the goods or services with which they are, or are intended
to be, used.
See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Under
certain circumstances, a portion of a mark consisting of
separate elements can be more significant in creating the
commercial impression that the mark engenders than other,
less dominant elements.
In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1988).
The marks are not necessarily going to be compared
on a side-by-side basis, but rather are more likely to be
encountered at different times and under different
circumstances by ordinary consumers, who will not
necessarily have perfect memories, but instead will be
likely to recall the mark they first encountered in terms
of its overall commercial impression.
In re Continental
Graphics Corp., 52 USPQ2d 1374 (TTAB 1999).
In the instant appeal, confusion is likely because the
mark applicant seeks to register is similar to the cited
registered mark and the goods with which applicant intends
to use it are closely related to the goods set forth in the
cited registration.
These marks create similar commercial
impressions because the dominant portion of applicant’s
mark is the same word, “STONE,” which is the registered
mark in its entirety.
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Ser No. 75/787,161
The evidence submitted by the Examining Attorney
establishes that consumers have reason to expect that the
goods listed in the registration and the goods specified in
the application, if sold under the same or similar marks,
would emanate from the same source.
In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1983).
Applicant makes no
persuasive arguments to the contrary.
The case boils down to whether the marks are so
similar that confusion would be likely.
Where the goods
are the same or closely related, in order for confusion to
be likely, the marks in question do not need to be as
similar as would be the case if the goods were not as
close.
ECI Division of E Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443 (TTAB `1980).
The word
“STONE” is the registered mark in its entirety.
Although
applicant’s mark includes a design element and the term
“JEANSPHILOSOPHY” in much smaller letters, it is the same
term, “STONE,” which is the dominant portion of applicant’s
mark.
It is this word, rather than the complex design of
an oval with a sideways chevron design or the coined term
“JEANSPHILOSPHY” presented beneath “STONE” and in smaller
letters than those in which “STONE” is shown, that is the
most discernible part of the mark, the part that will be
most easily remembered and used to call for or to recommend
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Ser No. 75/787,161
the goods.
Prospective purchasers who are familiar with
clothing sold under the registered “STONE” mark would, upon
encountering applicant’s clothing products under the mark
here sought to be registered, be likely to assume,
erroneously as it would turn out to be, that the same
source is responsible for all such goods.
Applicant’s arguments to the contrary are not
persuasive.
The pending and registered marks listed as
being in Class 25 in the response to the first Office
Action do not show “weakness” of the word “STONE” as an
indicator of source for clothing.
Even if we knew what the
Class 25 goods were that are listed in these registrations,
the marks themselves all create commercial impressions
which are substantially different from that created by the
registered mark cited as a bar to registration of
applicant’s mark.
The same is true for the marks in the
registrations which applicant attached to its brief.
“STONE TARLOW SIGNATURES,” “STONE HARBOR,” “STONE WOLF
VINYARDS” and “STONE MOUNTAIN,” for example, are no more
similar to each other than they are to the cited registered
mark.
The existence of these registrations hardly
justifies registering applicant’s mark over the cited
registered mark.
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Ser No. 75/787,161
There is no evidence in support of applicant’s
argument that confusion is not likely because its mark
connotes “softness,” or, for that matter, that the
connotation of the word “STONE” is different in applicant’s
mark from the connotation it has in the cited registered
mark.
Because the mark applicant seeks to register is
similar to the cited registered mark and because the goods
with which applicant intends to use it are closely related
to the goods set forth in the cited registration, confusion
would be likely.
We have no doubt that confusion would be likely if
applicant were to use the mark it seeks to register in
connection with the goods specified in the amended
application, but even if we did have some doubt, it would
have to be resolved in favor of the registrant and prior
user, and against applicant, who, as the second comer, had
a duty to select a mark which is not likely to cause
confusion with a mark already in use in its field of
commerce.
In re Hyper Shoppes (Ohio) Inc., 837 F2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988).
DECISION:
The refusal to register under Section 2(d)
of the Act is affirmed.
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