Break the Ice Tees, Inc.Download PDFTrademark Trial and Appeal BoardJun 6, 2007No. 78586049 (T.T.A.B. Jun. 6, 2007) Copy Citation Mailed: June 6, 2007 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Break the Ice Tees, Inc. ________ Serial No. 78586049 _______ Daniel P. Wells, pro se, for Break the Ice Tees, Inc. Carolyn V. C. Gray, Trademark Examining Attorney, Law Office 111 (Craig D. Taylor, Managing Attorney). _______ Before Rogers, Kuhlke and Bergsman, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Break the Ice Tees, Inc. has filed an application to register the mark shown below for goods identified as “clothing, namely tops, jerseys, hoods, caps, pants, bathing suits, underwear, and pajamas” in International Class 25.1 1 Application Serial No. 78586049, filed March 12, 2005, alleging February 1, 2003 as the date of first use and May 1, 2003 as the date of first use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a), and providing the following translation statement “The foreign wording in the mark translates into English as hello.” THIS OPINION IS NOT PRECEDENT OF THE TTAB Serial No. 78586049 2 Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when used on its identified goods, so resembles each of the two registered marks as to be likely to cause confusion, mistake or deception. The two registered marks are HOLA BEBE (in typed form) for “clothing – infant and children’s dresses, pants, shirts, skirts” in International Class 25 owned by Hard Nelson LLC,2 and HELLO (in typed form) for “sportswear, namely hats, shirts, shorts, and sweatpants” in International Class 25 owned by Michael Blake Taggett3. When the refusal was made final, applicant appealed and briefs have been filed. We affirm the refusal to register as to each of the cited registrations. 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 2 Registration No. 2932481, issued October 10, 2003. 3 Registration No. 1464683, issued November 10, 1987, Section 8 and 15 combined declarations accepted and acknowledged. Serial No. 78586049 3 (Fed. Cir. 2003). In any likelihood of confusion analysis, two 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 turn first to a consideration of the goods identified in the application and the cited registrations. It is well settled that goods need not be similar or competitive in nature to support a finding of likelihood of confusion. The question is not whether purchasers can differentiate the goods themselves, but rather whether purchasers are likely to confuse the source of the goods. See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). Further, we must consider applicant’s goods and the cited registrants’ goods as they are identified in the application and respective registrations and we cannot read limitations into those identifications. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987). If the identification in an application or a cited registration Serial No. 78586049 4 describes goods or services broadly, and there is no limitation as to the nature, type, channels of trade or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all channels of trade normal for these goods, and that they are available to all classes of purchasers for the described goods. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). The identification of “pants” in the application encompasses the children’s and infants’ pants in Registration No. 2932481 inasmuch as the application does not exclude children’s and infants’ clothing. The “tops” and “caps” listed in the application are nearly identical or closely related to the “shirts” in Registration No. 2932481 and the “shirts” and “hats” in Registration No. 1464683. Moreover, given that the goods are identical or closely related and there is no limitation in the identification thereof in the application, we must presume that the identical goods will be sold in the same channels of trade and will be bought by the same classes of purchasers, while the related goods will be sold in some of the same channels of trade, and will be bought by some of the same purchasers. See Canadian Imperial Bank v. Wells Serial No. 78586049 5 Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). With regard to the infants’ and children’s wear in Registration No. 2932481, applicant argues that its goods are different inasmuch as they are designed for adults and are sold in “exclusive women’s clothing boutiques, and specialty men[‘s] and women’s niche clothing stores.” Br. p. 5. However, there is no such limitation in applicant’s identification of goods and we must make our analysis as to the goods identified. Hewlett-Packard Co., supra. An applicant may not restrict the scope of the identified goods by extrinsic evidence. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). Applicant has presented no argument with regard to the goods in Registration No. 1464683. In view of the above, the du Pont factors of the similarity of the goods, the channels of trade, and class of purchasers favor a finding of likelihood of confusion as to the cited registrations. We turn now to the first du Pont factor, i.e., whether applicant’s mark HOLA (stylized with design) and registrants’ marks HOLA BEBE and HELLO are similar or dissimilar when compared in their entireties in terms of appearance, sound, connotation and commercial impression. Serial No. 78586049 6 It is well settled that marks must be considered in their entireties, not dissected or split into component parts and each part compared with other parts. It is the impression created by the involved marks, each considered as a whole, that is important. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). Finally, “[w]hen marks would appear on virtually identical goods or services, the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert denied, 506 U.S. 1034 (1992). With regard to the mark HOLA BEBE in Registration No. 2932481, we agree with the examining attorney that HOLA is the dominant portion of registrant’s mark inasmuch as the word BEBE is descriptive of the infant clothing and is disclaimed. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“That a particular feature is descriptive [or otherwise lacking in distinctiveness] ... with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark...”). Thus, inasmuch as the dominant element in registrant’s mark is identical to the literal portion of applicant’s Serial No. 78586049 7 mark, the marks have a similar overall commercial impression and share strong similarities in sound. In addition, both marks share the connotation of the greeting “hello.” The addition of the descriptive word BEBE to registrant’s mark is not sufficient to distinguish the marks. In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Further, because it is the words by which consumers will call for the goods, we also find that the design element of a personified H and stylized lettering in applicant’s mark does not serve to sufficiently distinguish the marks. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). Viewing the marks in their entireties, they are similar in sound and connotation, and they convey a similar commercial impression. With regard to Registration No. 1464683, the examining attorney argues that under the doctrine of foreign equivalents HOLA is the Spanish equivalent of the English word HELLO and, thus, the marks are confusingly similar. Spanish is commonly spoken in the United States and there is no dispute that HOLA is the equivalent of HELLO. Applicant argues that HOLA also translates to HEY and HI; however, we do not find that these other possible translations detract from the equivalency of the words HOLA and HELLO. Applicant also argues that the examining Serial No. 78586049 8 attorney “made her decision based solely on the Spanish to English translation noted in the applicant’s initial application, without weighing [that] against the marks[’] dissimilarity in appearance, sound, connotation, and commercial impression.” We see no such error. The marks share the identical connotation in that both marks connote the greeting hello. Moreover, there are similarities in the sound and appearance of both marks, as each consists of a relatively short word (four and five letters respectively) and begins with the letter H and include the letter L in the middle. Thus, these elements taken together combined with the arbitrary nature of the marks and the close relationship of their respective goods, outweigh the dissimilarities in the appearance and pronunciation of the marks. In re Ithaca Industries, Inc., 230 USPQ 702, 704 (TTAB 1986). In view of the above, the factor of the similarity of the marks also favors a finding of likelihood of confusion with respect to each cited registration. In making our findings, we have considered applicant’s argument that in view of its two prior registrations for the mark JUST SAY HI (and design) consumers “are likely to assume that the applicant’s mark is owned by the same owner of [its] previously registered marks, and that the goods Serial No. 78586049 9 originate from the same source” because of the similar H design element. We do not find applicant’s argument persuasive because its registered marks are substantially different from the marks at issue in this case. Moreover, there is no evidence in the record establishing that the public recognition and renown of applicant’s stylized letter “H” has become so well known that consumers identify it as a source identifier separate and apart from the composite mark. Without such a showing, there is no factual basis for applicant’s argument that consumers will associate the source of the mark in the application at issue with applicant’s registered marks. In addition, in its brief, applicant referenced two third-party registrations purportedly for the mark “Hi” for “clothing” and argues “that if two marks for the same word in English can be registered for the same Class of Goods due to their dissimilarities, the same should apply for two marks in different languages which display much the same dissimilarities.” We first note that these registrations were not made of record and, therefore, we do not know precisely the nature of the marks in these registrations and whether they are valid and subsisting, but in any event, each case must stand on its own merits and we do not find applicant’s argument persuasive. In re Nett Designs Serial No. 78586049 10 Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). “[P]rior decisions in trademark cases, where the issue is a likelihood of confusion, furnish meager assistance in the resolution of that issue. Each case must be decided on the basis of the factual situation thereby presented.” Polaroid Corp. v. Richard Mfg. Co., 341 F.2d 150, 144 USPQ 419, 421 (CCPA 1965). See also In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977). Finally, in connection with Registration No. 2932481, applicant argues that there have been no known instances of actual confusion in approximately three years of concurrent use. We do not accord significant weight to this contention. While a showing of actual confusion may be highly probative, the lack of evidence of actual confusion carries little weight, particularly in an ex parte proceeding. Majestic Distilling, supra, 65 USPQ2d at 1205. In conclusion, we find that because the marks are similar, the goods are legally identical or related, and the channels of trade are the same, confusion is likely between applicant’s mark and the marks in the cited registrations. To the extent there are any doubts, we resolve them, as we must, in favor of the registrants. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988). Serial No. 78586049 11 Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation