Carman Licciardello

Trademark Trial and Appeal Board

Apr 25, 2008

No. 75412303 (T.T.A.B. Apr. 25, 2008)

Mailed: April 25, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Carman Licciardello
________

Serial No. 75412303
_______

Jill M. Pietrini and Jessica J. Slusser of Manatt, Phelps &
Phillips, LLP for Carman Licciardello.

David C. Reihner, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Holtzman, Zervas and Cataldo, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Carman Licciardello, has filed an application to
register the mark CARMAN in typed form for "clothing, namely,
hats, jackets, bandannas, t-shirts, shirts, jerseys, and tank
tops" in Class 25.1

1 Serial No. 75412303, filed December 30, 1997, based on an allegation
of first use and first use in commerce in May 1983. Applicant has
claimed ownership of Registration Nos. 2262448 and 2203001, both for
the mark CARMAN, for musical recordings and live performances,
respectively. However, the registrations have been cancelled, and they
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 75412303
2
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the registered mark CARMEN in typed form for "clothing, namely,
shirts, T-shirts, sweatshirts, hats and jackets" in Class 25, as
to be likely to cause confusion.2
When the refusal was made final, applicant appealed.
Briefs have been filed.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). The relevant
du Pont factors are discussed below.

are therefore not evidence of any presently existing rights in the mark
for the goods or services identified in the registrations.

2 Registration No. 2035888; issued on February 4, 1997; assigned to
Vina Carmen S.A., a corporation of Chile; renewed. The registration
also includes Class 33 for "wine" but it is clear that the refusal to
register is based only on Class 25.
Serial No. 75412303
3
Goods/trade channels/purchasers/conditions of purchase

The goods in the application and cited registration are, in
substantial part, identical. Both applicant and registrant are
using the mark on shirts, t-shirts, hats and jackets.
Applicant contends that the respective goods "are marketed
to different customers in different industries." Brief and Reply
Brief at 6. Applicant argues that CARMAN is the given name of a
well-known Christian musician and teacher; that the clothing is
sold by applicant to fans, music lovers and people interested in
applicant's ministry; and that the goods are sold through record
stores, his own website and fan websites. In contrast, according
to applicant, registrant is a vineyard in Santiago, Chile and its
clothing is sold in association with the vineyard on "souvenir"
apparel to visitors to registrant's winery, tourists, wine
industry enthusiasts and wine connoisseurs; and that registrant
"probably" advertises mainly to such customers "nearly
exclusively in Chile." Brief at 13. To support his position,
applicant has submitted printouts from applicant's website,
carman.org, and registrant's website, carmen.com; and relies on
an infringement case, Taj Mahal Enterprises, Ltd. v. Donald J.
Trump, 745 F. Supp. 240, 16 USPQ2d 1577 (D.N.J. 1990).
To begin with, the web pages of record provide no evidence
as to how or to whom the goods are actually sold. Neither
website provides information about or even reference to the sale
Serial No. 75412303
4
of clothing. In any event, the authority is legion that the
question of likelihood of confusion in a Board proceeding, in
contrast to an infringement proceeding, must be decided on the
basis of the goods set forth in the application and registration,
without limitations as to the actual nature of the goods, their
channels of trade and/or classes of purchasers that are not
reflected therein. See J & J Snack Foods Corp. v. McDonald's
Corp., 932 F.2d 1460, 1464, 18 USPQ2d 1889 (Fed. Cir. 1991);
Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 942, 16 USPQ2d 1783 (Fed. Cir. 1990); and CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
The goods in this case are identical in part, and there are
no limitations in the application or registration.3 It must
therefore be presumed that both applicant's and registrant's
clothing would be purchased by all the usual consumers of such
goods; and that the clothing would be sold through all normal
channels of trade, including all of the usual retail outlets for
such goods. In other words, we must presume that applicant and
registrant compete for the same customers through the same
channels of trade. See Octocom Systems, supra at 1787 ("the
factors which OSI asks to have considered are not reflected,
either expressly or inherently, in its application. Thus, it was

3 Further, we will not infer any restrictions to trade channels or
purchasers from the inclusion of Class 33 for wine in the registration.
Serial No. 75412303
5
not error, as OSI argues, for the board to give no weight to
OSI's evidence purporting to show that OCTOCOM modems are brought
by a particular class of purchasers."); Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) ("There is no
specific limitation here, and nothing in the inherent nature of
SquirtCo's mark or goods that restricts the usage of SQUIRT for
balloons to promotion of soft drinks."); and Tuxedo Monopoly,
Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 1337, 209
USPQ 986, 988 (CCPA 1981) ("Here, appellant seeks to register the
word MONOPOLY as its mark without any restrictions reflecting the
facts in its actual use which it argues on this appeal prevent
likelihood of confusion. We cannot take such facts into
consideration unless set forth in its application.").
Furthermore, because t-shirts, hats, and the like are
relatively inexpensive items of clothing, we may assume that such
items are more likely to be purchased with less care than more
expensive types of wearing apparel. See, e.g., Specialty Brands,
Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ
1281 (Fed. Cir. 1984) (purchasers of relatively inexpensive
products are held to a lesser standard of purchasing care).
Marks
We turn next to the marks, keeping in mind that when marks
would appear on identical goods, the degree of similarity between
the marks necessary to support a finding of likelihood of
Serial No. 75412303
6
confusion declines. Century 21 Real Estate v. Century Life, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
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 marks CARMAN and CARMEN are simply alternative
spellings of the same given name.4 Thus, the marks are the same
in meaning and commercial impression. Furthermore, CARMAN and
CARMEN, even with the different spellings, look and sound
substantially the same. Considering the fallibility of memory
over a period of time, and the fact that the average purchaser
normally retains only a general, rather than a specific,
impression of many trademarks he encounters, it is the name
itself rather than the precise spelling of the name that
purchasers are likely to remember when hearing or seeing these
marks at separate times on identical goods. See Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).

4 We take judicial notice of the United States Census Bureau, Census
1990 (www.census.gov/genealogy/names). See In re Spirits International
N.V., 86 USPQ2d 1078 (TTAB 2008) (the Board may take judicial notice of
census data). The census information shows that "Carman" a well as
"Carmen" are female given names. Although it can be seen that "Carmen"
is the more popular spelling, "Carman" is still in approximately the
top 1/3 of frequently occurring female names.
Serial No. 75412303
7
We have considered applicant's arguments that the marks are
not similar and find none of them persuasive.
Applicant argues that the marks have different meanings and
commercial impressions in that, according to applicant, CARMAN is
the name of a well-known Christian musician and teacher to the
customers and followers of his music and ministry whereas CARMEN
would be associated with registrant's vineyard which applicant
claims is named after the founder's Chilean wife, Carmen Lanz.
Reply Brief at 9. However, as we have said, the purchasers for
the respective goods are not limited to fans of applicant's music
or visitors to registrant's vineyard. The purchasers of both
applicant's and registrant's clothing are deemed to include
ordinary members of the general public who may or may not be
familiar with either applicant and its music, or registrant and
its vineyard.
Applicant argues that "English speaking people use the terms
'man' and 'men' to mean different things in plain language every
day without confusion." Reply Brief at 8. However the marks are
not "MAN" and "MEN" but rather CARMAN and CARMEN and in the
context of the marks as a whole, the difference in spelling does
not result in a difference in meaning.
Applicant contends that the marks are not similar in sound,
arguing that because registrant's primary customers are Chilean,
the question is how customers would pronounce CARMEN in Spanish,
Serial No. 75412303
8
not English. Applicant does not explain how CARMEN would sound
significantly different than CARMAN in Spanish, but in any event,
the relevant consideration is how the mark would be perceived by
consumers in the United States, many of whom do not speak
Spanish.
Finally, applicant argues that registrant uses the mark
"most often in close association with the additional words
'VINEYARDS CHILE.'" Brief at 12. However, that wording is not
part of the registered mark and it is not relevant to a
determination of whether the marks before us are similar.
Market interface/absence of actual confusion
Applicant claims that this record reflects the opinions of
both applicant and registrant that there is no likelihood of
confusion. Applicant argues that he is the senior user of the
mark and that he has been using his mark for nearly 24 years;
that he is an award-winning musician who has released more than
25 albums, many of which, according to applicant, have reached
gold and platinum status; that the clothing sold in association
with his music and ministry "has had substantial sales" over
those years; and that applicant and registrant have coexisted "in
their respective markets" for nearly 14 years without confusion.
Reply Brief at 4, 7. Applicant maintains that registrant "agrees
that there is no likelihood of confusion between the two marks";
that the parties have a "coexistence" agreement; and, pointing to
Serial No. 75412303
9
In re Schoeneman Enterprises, Inc. Serial No. 74/126,146 (TTAB
Dec. 14, 1993), that the Board has "specifically found that a
coexistence agreement between the parties that has not been
formalized in a written agreement is to be accorded substantial
weight." Brief at 13; Reply Brief at 3.
By way of background, following the refusal to register on
May 28, 1998, applicant filed a petition to cancel the cited
registration on April 19, 2000 on the ground of priority and
likelihood of confusion (Canc. No. 92030390). Further action in
the application was then suspended pending the outcome of the
cancellation proceeding.
During the pendency of the cancellation proceeding, the
parties discussed settlement, and in a letter dated August 29,
2000, registrant's counsel, Robert J. Kenney, made the following
proposal:
...we have discussed this matter with our client and propose
the following solution. Specifically, our client will agree
to always use the terms 'VINEYARDS CHILE' after the term
CARMEN on all of its clothing items. This, we believe will
eliminate any possibility of confusion or mistaken
affiliation between the parties, since the common goods
appear to be clothing items only.

In response to this proposal, applicant prepared a draft
"consent agreement" purportedly incorporating the proposed terms,
and proceedings in the cancellation were suspended for settlement
negotiations on March 28, 2001. However, the parties apparently
Serial No. 75412303
10
failed to reach an agreement, and the petition to cancel was
ultimately dismissed on May 18, 2004 in view of petitioner's
failure to prosecute the case.
In view of the dismissal of the petition to cancel, the
examining attorney on July 16, 2004, resumed action in the
application, continuing the refusal to register. In response to
the refusal, applicant submitted a copy of a partially executed
draft agreement (by applicant) along with the August 29, 2000
letter from Mr. Kenney. The examining attorney was unwilling to
accept such documents as sufficient evidence of registrant's
consent to registration, and he ultimately issued a final refusal
in the application.
Applicant then sent several inquiries to Mr. Kenney
beginning on February 24, 2006 regarding the status of
applicant's draft agreement, and in a letter dated May 19, 2006,
Mr. Kenney responded as follows:
Our client advises that it is willing to sign a simple
letter of Consent which will allow [applicant] to obtain his
registration over the pending refusal without any additional
obligations to our client. For example, our client is not
willing to agree to a requirement that it use always
VINEYARDS CHILE immediately following the CARMEN mark.

We believe that, given the different channels of trade for
the goods, the differences in the goods, and the coexistence
of the parties in the marketplace for many years, such
restrictions are simply not necessary.

Serial No. 75412303
11
After a follow-up inquiry by applicant as to the particular
terms of the agreement, Mr. Kinney, in a letter dated June 8,
2006 stated:
Regarding the terms of the proposed Consent Letter, our
client would agree to the most simple form of Consent
letter. Specifically, the terms would be:

1. The parties agree that there is no likelihood of
confusion between the marks in view of the differences in
the mark, the differences in the products/services, and the
differences in the channels of trade;

2. [Registrant] would Consent to the Use and Registration
by [applicant] of the mark in the pending application for
the goods/services listed in that application.

Terms that would not be included would be (a) limitations on
either party's use of its mark, for example, use only with
another term; or (b) provisions which allow/prohibit either
party to expand its use of its mark to other goods/services.

If your client will agree to a simple Consent Letter
incorporating the terms above, please draft a proposed
Letter and we will forward it to our client for
consideration.

On October 2, 2006, applicant prepared a second draft
agreement for registrant's consideration, but having received no
response from registrant, applicant sent a follow-up email to Mr.
Kenney on October 23, 2006. On October 27, 2006, Mr. Kenney left
a voicemail message with applicant's counsel wherein, as
transcribed by Ms. Slusser, Mr. Kenney stated that he sent "an
urgent reminder" to registrant to get back to him "on the
proposal." However, the agreement was never signed.
Serial No. 75412303
12
While the parties attempted to reach an agreement we cannot
find, based on the information we have before us, that there was
an agreement. Applicant's and registrant's counsel exchanged a
series of proposals and drafts but the fact remains that no
agreement was ever executed by the parties or ever finalized.
Nor will we infer any agreement. It is clear that registrant did
not consent to registration based on the terms contained in
applicant's original draft agreement. That proposal was
expressly withdrawn by registrant. In registrant's subsequent
proposal, the consent was provisional. Registrant stated in its
June 8, 2006 letter that it would agree to a "simple letter of
consent," identifying specific terms and conditions. In
response, applicant prepared a draft which we note contains terms
and conditions in addition to or other than those specified by
Mr. Kenney. We have no way of knowing for certain why registrant
did not sign the draft, but if we were to infer anything from
that inaction, we would infer that registrant did not agree to
its terms.
Nevertheless, even if we assume that Mr. Kenney's June 8,
2006 proposal constitutes an agreement between the parties that
there is no likelihood of confusion based on the terms contained
therein, this agreement would not persuade us that a likelihood
of confusion does not in fact exist in this case. In appropriate
circumstances, consent agreements are entitled to substantial
Serial No. 75412303
13
weight in determining likelihood of confusion. See Bongrain
International (American) Corp. v. Delice De France, Inc., 811
F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987). However, this does
not mean that the mere existence of a consent, regardless of the
type of consent or the circumstances surrounding the consent,
will automatically result in a finding of no likelihood of
confusion. See In re Mastic, Inc., 829 F.2d 1114, 4 USPQ2d 1292
(Fed. Cir. 1987) (SHURLOK for roofing shingles confusingly
similar to SHURLOK for vinyl siding notwithstanding existence of
consent agreement); DuPont, supra; In re Dakin's Miniatures Inc.,
59 USPQ2d 1593 (TTAB 1999); and In re Donnay International,
Societe Anonyme, 31 USPQ2d 1953 (TTAB 1994). "[A] consent is
simply evidence which enters into the likelihood of confusion
determination and may or may not tip the scales in favor of
registrability, depending upon the entirety of the evidence."
Mastic, supra at 1294 (citations omitted).
In this case, the purported consent is essentially a "naked"
consent. It simply states that "there is no likelihood of
confusion in view of the differences in the mark, the differences
in the products/services, and the differences in the channels of
trade." While even a "naked" consent to registration may be
sufficient under certain circumstances to "tip the scales" in
favor of registration, in this case it is not.
Serial No. 75412303
14
The marks are not "different" at least in any significant
way; and registrant's statement that the goods are "different" is
flatly contradicted by the application and registration, which on
their face show identical goods.5 Furthermore, the mere
statement that the trade channels are different is meaningless
without any attempt to restrict or delineate the markets in which
each party's mark would function. Cf. Mastic, supra at 1295
("The statement in the consent that the parties considered the
'dissimilarity' in their trade channels is as vacuous as the
statement that they considered the "dissimilarity of their
respective marks which are, in fact, identical...").
Nor will we imply restrictions to the trade channels from
the agreement itself. As the Court in Mastic observed in
rejecting applicant's argument that the consent contained an
implicit agreement restricting the parties' use (italics in
original):
Whatever agreement -- if any --may exist between the parties
with respect to trade channels, for example, has not been
disclosed. ... [While the consent states that the parties
considered the "dissimilarity of the established, likely to
continue trade channels"] [t]hat conclusory statement does
not prove that the trade channels are, in fact, dissimilar
and likely to continue. Evidence must be submitted which
shows what are the established trade channels, together with
some statement of the users' intentions. In the absence of

5 Applicant has misstated the principle in In re British Bulldog, Ltd.,
224 USPQ 854, 856 (TTAB 1984) which, as correctly stated, is that there
is no per se rule that the use of the same or similar marks on
different items of wearing apparel is likely to cause confusion.
Moreover, that principle simply does not apply to the goods in this
case which are in part identical.
Serial No. 75412303
15
evidence with respect to the specific channels of trade of
Mastic and Flintkote, it is reasonable to conclude that they
are the same as those generally used in the trade. Here,
the only evidence with respect to trade channels is that
submitted by the examiner showing that the trade channels
for the types of products are the same, and that evidence
stands uncontradicted. Contrary to Mastic's view, the
consent itself is not evidence that the channels are
different.

Mastic, supra at 1295.
In this case, when we balance all the du Pont factors of
record, we find that the parties agreement, stating simply that
there is no likelihood of confusion, is far from sufficient to
"tip the scales" in favor of registrability when all the other du
Pont factors of record demonstrate that there is in fact a
likelihood of confusion.
In making this finding, we have also considered applicant's
contention that the parties have coexisted for nearly 14 years
without any instances of actual confusion. While the absence of
actual confusion is a factor indicative of no likelihood of
confusion, it is meaningful only where the record demonstrates
appreciable and continuous use by applicant of its mark in the
same markets as those served by registrant under its mark. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992).
While we have some information about the applicant's use we
have no information regarding registrant's use. Indeed,
applicant states, noting that registrant is a corporation of
Serial No. 75412303
16
Chile, that the respective goods are marketed "in different
countries." Reply Brief at 6. Applicant also admits that it was
unable to find any advertising of registrant's clothing in any
outlet in the United States or even on registrant's website.
Registrant may have made only very limited use of the mark in the
United States. In any event, the point is that without any
information as to the nature and extent of registrant's use in
the United States, we have no way of knowing whether the
opportunity for confusion ever existed. See Gillette Canada,
supra. See also, e.g., Nina Ricci, S.A.R.L. v. E.T.F.
Enterprises, Inc., 889 F.2d 1070, 1072, 12 USPQ2d 1901, 1902
(Fed. Cir. 1989) ("The absence of any showing of actual confusion
is of very little, if any, probative value here because (1) no
evidence was presented as to the extent of ETF's use of the
VITTORIO RICCI mark on the merchandise in question in prior
years, and (2) the Board specifically found that ETF was not
selling such merchandise at the time of the opposition proceeding
in its own stores or elsewhere.")
Thus, the factor of lack of actual confusion does not favor
a finding of no likelihood of confusion as applicant contends.
Instead, this factor is neutral. See Blue Man Productions Inc.
v. Tarmann, 75 USPQ2d 1811 (TTAB 2005).
Applicant's reliance on the unpublished case of In re
Schoeneman Enterprises, Inc., supra, is misplaced. The "very
Serial No. 75412303
17
unusual circumstances" of that case simply do not exist here. In
that case, the Board in finding no likelihood of confusion noted
the contemporaneous use of the marks for over sixty years; and
moreover, placed great emphasis on the "unusual registration
history" showing "decades of contemporaneous registration" for
over fifty years. In the present case, applicant's now-cancelled
registrations for entirely different goods and services (sound
recordings and live performances) fail to demonstrate
contemporaneous registration of the marks for the same goods for
any period of time, let alone decades.
In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992) is
also readily distinguishable. The finding of no likelihood of
confusion in that case was based on a "confluence of facts," not
one of which is present here, including the "inherent weakness"
of the marks as applied to the respective goods, the coexistence
of the marks in the marketplace for nearly thirty years; and the
fact that the goods (automobiles) involved a major and expensive
purchase.
In view of the foregoing, and because substantially similar
marks are used in connection with identical goods, we find that
confusion is likely.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.