IN RE NEW WAVE GROUP AB, 77354805 (TTAB 4-25-2011)
Serial No. 77354805United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: April 25, 2011Page 1
Parna A. Mehrbani of Lane Powell PC for New Wave Group AB.
Jason Paul Blair, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney).
Before Quinn, Taylor and Mermelstein, Administrative Trademark Judges.
Opinion by Taylor, Administrative Trademark Judge:
New Wave Group AB has filed an application to register on the Principal Register the mark shown below,
for “clothing, namely, shirts, blouses, T-shirts, polo shirts, woven shirts, knit shirts, anoraks, shawls, jackets, sweat shirts, rain wear, wind resistant jackets, pullovers, vests [and] coats.”[fn1]Page 2
The examining attorney has refused registration under Trademark Act ? 2(d), 15 U.S.C. ? 1052(d), on the ground that applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in Registration No. 2685101, CLIQUE (in typed form), for “Clothing, namely, shirts, T-shirts and hats” that it is likely to cause confusion, to cause mistake or to deceive.[fn2]
When the refusal was made final, applicant appealed and requested reconsideration of the final refusal. On May 12, 2010, the examining attorney denied the request for reconsideration and, on May 18, 2010, this appeal was resumed. Briefs were filed by both applicant and the examining attorney. For the reasons discussed below, 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, twoPage 3
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 Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We first consider the goods. It is settled that the question of likelihood of confusion must be determined based on an analysis of the goods recited in applicant’s application vis-?-vis the goods recited in the cited registration. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North American Chicago Corp., 20 USPQ 2d 1715 (TTAB 1991). Further, where the goods in the application and cited registration are broadly identified as to their nature and type (as is the case herein with both applicant’s and registrant’s identifications), such that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses not only all the goods of the nature and type described therein, but that the identified goods are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potentialPage 4
buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
In this case, the identified goods of applicant and those of the cited registrant include goods which are identical items, i.e., shirts and T-shirts, or legally identical items, i.e., applicant’s polo shirts, woven shirts, and knit shirts which are encompassed by registrant’s broadly identified shirts. Also, the other goods identified in applicant’s application (i.e., blouses, anoraks, shawls, jackets, sweat shirts, rain wear, wind resistant jackets, pullovers, vest and coats) are closely related to registrant’s identified goods (i.e., shirts, T-shirts and hats), all being clothing items.
Applicant attempts to distinguish its goods from those of the registrant by arguing that “[t]he parties respective lines of clothing are fundamentally different ? New Wave sells conservative, golf, sport-style clothing and `promo-wear,’ whereas Tribal [registrant] sells edgy, aggressive t-shirts and caps with graffiti designs on them known as `streetwear.'” Br. p 3. However, neither applicant’s nor registrant’s identified goods are restricted to a certain style or appearance. And, as noted, we must make our findings based on the goods as they are recited inPage 5
applicant’s application and the cited registration. Canadian Imperial Bank v. Wells Fargo Bank, supra.
Further, with respect to channels of trade and classes of purchasers, because there are no limitations in either applicant’s application or the cited registration, we must presume that the respective goods will be offered in the usual channels of trade therefor, including department stores and clothing boutiques, and to the usual classes of customers, including ordinary purchasers. See In re Elbaum, supra. Indeed, given that applicant’s and registrant’s goods are, in part, identical, it is presumed, at least with respect to those goods, that they move in the same trade channels and to the same classes of purchasers. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”).Page 6
Thus, applicant’s argument that it and the cited registrant target very different purchasers through mutually exclusive trade channels is simply unavailing.[fn3] In considering the scope of applicant’s application and the cited registration, we look to the application or registration itself, and not to extrinsic evidence about the actual goods, customers or channels of trade. Id.
In view thereof, the du Pont factors of the relatedness of the goods, channels of trade and classes of purchasers strongly favor a finding of likelihood of confusion as to the cited registration.Page 7
With respect to the conditions under which the goods are sold, applicant argues that the respective purchasers are relatively sophisticated consumers who are looking for very specific clothing and that applicant’s consumers are businesses and business people looking for conservative clothing to be used as promo-wear and registrant’s consumers are individuals looking for edgy “streetwear.” Besides the lack of evidence in the record supporting the sophistication of the respective consumers, both applicant’s and registrant’s goods include fairly basic articles of clothing, i.e., shirts and T-shirts, whose purchasers would include ordinary consumers ? given the absence of restrictions in the type of consumers in either identification. These ordinary consumers would be expected to exercise no more than ordinary care in their purchasing decisions. Moreover, even if we assume that both applicant’s and registrant’s consumers exercise more than ordinary care in their purchasing decisions, such care would not obviate the likelihood of confusion where, as here, the goods are identical (in part) and the marks are very similar.
Accordingly, this du Pont factor is, at best, neutral. We turn then to a consideration of the marks and
compare applicant’s mark 
and registrant’s markPage 8
CLIQUE (in typed form). In determining the similarity or dissimilarity of the marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 their entireties that confusion as to the source of the 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 specific impression of trademarks.See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Finally, when marks would appear on 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).
The examining attorney contends that “[b]ecause the marks contain identical wording, and because the cited registrant’s mark is a typed drawing that can be displayed in any lettering style, the marks are sufficiently similarPage 9
to support a finding of likelihood of confusion.” Ex. Atty. br. unnumbered p. 6.
Applicant, on the other hand, maintains that “[t]he addition of the design element in Applicant’s mark differentiates the overall appearance and projects a different commercial impression from that of the Cited mark.” App. br. p. 11.
We agree with the examining attorney. Specifically, with a composite mark comprising a design and words, it is the wording that would make a greater impression on purchasers and is the portion that is more likely to be remembered as the source-signifying portion of the applicant’s mark. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593 (TTAB 2001) (“words are normally accorded greater weight because they would be used by purchasers to request the goods”). See also, e.g., In re Appetito Provisions Co., 3 USPQ2d 1553 (1987). Here, the literal element CLIQUE is the distinguishing and source-identifying portion of applicant’s mark. Although the design element is clearly noticeable, the shaded rectangles abutting the letters “C” and “E” of the term CLIQUE, as well as the rectangle carrier within which the word CLIQUE and the rectangles appear, have minimal visual impact, merely serving to frame the literal component of applicant’s mark.Page 10
It is the word CLIQUE that will be used by purchasers to call for applicant’s goods.
Further, as correctly stated by the examining attorney, the stylization of the word CLIQUE in applicant’s mark does not serve to distinguish it from registrant’s mark. Because the cited mark is registered in typed format, we must consider that it could be displayed in the same or similar lettering as the literal element in applicant’s mark. See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“While applicant’s mark is in script form and registrant’s is in block letters, that is the only difference between them and that is not a significant difference in view of the fact that purchasers are unlikely to remember this simple distinction. Rather, it is the word itself which will more likely be recalled”); and In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988) (by registering its mark in block form, registrant’s rights reside in the word LITE and not in any particular form of the mark).
Accordingly, despite the obvious differences in appearance, we find the marks in their entireties are substantially similar in appearance, sound, connotation and commercial impression. The factor of the similarity of the marks thus favors a finding of likelihood of confusion.Page 11
We now address a couple of additional arguments made by applicant. First, applicant argues that the registrant “does not use the Cited Mark CLIQUE as registered. Tribal appears to use CLIQUE consistently together with the term TRIBAL, i.e., TRIBAL CLIQUE.” Br. p. 12, n. 1. This argument constitutes a collateral attack on the cited registration and will not be heard during ex parte prosecution. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQd2d 1531.1531 (Fed. Cir. 1997); and In re Peebles Inc., 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992). Moreover, the issue of likelihood of confusion in this case must be decided based upon a comparison of applicant’s mark and the cited mark as shown in the drawings, and not as actually used.[fn4]
Finally, applicant argues that
New Wave has obtained two registrations (Reg. Nos. 2,721,668 and 3,768,065) for Applicant’s Mark CLIQUE Design for similar goods (including ski wear in Class 25, with a registration that has an earlier filing date and first use dates than that of the registration for the Cited Mark). Ski wear in Class 25 is similar to the clothing items in Class 25 in New Wave’s current application andPage 12
the clothing items in Class 25 in Tribal’s registration for the Cited Mark. Applicant’s Mark and the Cited mark already have co-existed on the Principal Register for over seven (7) years.
Br. p. 11. We presume by this that applicant is arguing that inasmuch as it owns earlier existing registrations for the same mark, and those registrations coexist with the cited registration, applicant should be allowed to register its involved CLIQUE and design mark. We find this argument unpersuasive. Registration No. 2721668 is for “trunks; and bags, namely, bags for sport, athletics, beach, shopping travel and school” in Class 18 and “ski wear” in Class 25. Registration No. 3768065 is for “bags for carrying computers” in Class 9 and “backpacks, toiletry cases sold empty; dufflebags; roll bags, [and] business briefcases” in Class 18.
These registrations, though, are for significantly different goods from those in the present application, in that applicant has expanded the identification of goods in the present application to include various types of clothing, not just those for skiers, including clothing identical to that in the cited registration, i.e., shirts and T-shirts. In light of the broad identification in the present application, the fact that applicant owns registrations for an identical mark for significantlyPage 13
different or narrower goods does not persuade us that there is no likelihood of confusion in this case.
In view of the foregoing, we conclude that prospective purchasers familiar with registrant’s CLIQUE mark for clothing, namely shirts, T-shirt and hats would be likely to believe, upon encountering applicant’s mark for clothing, namely, shirts, blouses, T-shirts, polo shirts, woven shirts, knit shirts, anoraks, shawls, jackets, sweat shirts, rain wear, wind resistant jackets, pullovers, vests and coats, that applicant’s and registrant’s goods originate with or are somehow associated with or sponsored by the same entity.
Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.
[fn1] Serial No. 77354805, filed December 18, 2007, and alleging a bona fide intention to use the mark in commerce. The application contains the following statement: “Color is not claimed as a feature of the mark.” [fn2] Issued February 11, 2003, Section 8 Affidavit accepted, Section 15 Affidavit acknowledged. [fn3] Indeed, applicant spent much of its brief attempting to show differences in the goods, channels of trade and classes of purchasers. However, applicant’s arguments (and evidence) are irrelevant where, as here, there are no limitations in the respective identifications. We nonetheless feel compelled to briefly address some of the proffered evidence. First, applicant included links to Internet evidence. Even if relevant, the hyperlinks would have had little probative value. That is because there is no assurance that the content of the linked material is the same today as when applicant cited it. In order to make such evidence of record, applicant should have submitted copies of the web pages that were in existence at the time it filed its response.With regard to the numerous cases cited by applicant to bolster its contention that the goods, trade channels and/or consumers are not related, as is often noted by the Board and the Courts, each case must be decided on its own merits. See In re Nett Designs Inc., 236 F.3d 1339, 51 USPQ2d 1564, 1566 (Fed. Cir. 2001). See also, In re Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001); and In re Wilson, 57 USPQ2d 1863 (TTAB 2001).
We particularly point out that the issue of likelihood of confusion before the Board concerns registrability rather than use. For this reason, the infringement cases cited by applicant are readily distinguishable.
[fn4] We also point out that “it is settled that a product label can bear more than one trademark without diminishing the identifying portion of each portion.” Fort James Operating Co. v. Fort Royal Paper Converting, Inc., 83 USPQ2d 1624, 1629 (TTAB 2007), citing The Proctor Gamble Company v. Keystone Automotive Warehouse, Inc., 191 USPQ 468, 474 (TTAB 1976).