Cremieux

Trademark Trial and Appeal Board

Jan 8, 2002

No. 75465247 (T.T.A.B. Jan. 8, 2002)

Oral Hearing: 1/8/02 Paper No. 19
October 23, 2001
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cremieux
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Serial No. 75/465,247

William H. Holt of Law Office of William H. Holt for Daniel
Cremieux.

Sue Carruthers and Jeremy Klaus, Trademark Examining Attorneys,
Law Office 108 (David Shallant, Managing Attorney).
_______

Before Seeherman, Hohein and Walters, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Daniel Cremieux has filed an application to register
the mark "DCS DANIEL CREMIEUX SPORT" and design, as shown below,

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/465,247
2
for "clothing, namely, suits, jackets, lumber-jackets, shirts,
tracksuits, shorts, pullovers, sweat shirts, coats, rain-coats,
pants, one-piece suits, tuxedos, bermuda shorts, sweaters,
vests, short-sleeved shirts, t-shirts, polo shirts, ties, bow
ties, belts, gloves, socks, housecoats, bathrobes, pajamas,
scarves, foulards; underwear; footwear except orthopedic,
diving, and athletic shoes; [and] headwear."1
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 his goods, so resembles
the mark "DCS," which is registered for "athletic shoes,"2 as to
be likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed and an
oral hearing was held.3 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

1 Ser. No. 75/465,247, filed on April 9, 1998, which is based upon a
bona fide intention to use the mark as well as ownership of French
Reg. No. 97/698,643, dated October 9, 1997, for such mark. The lining
in the mark is for the colors blue, red and gold and the word "SPORTS"
is disclaimed.

2 Reg. No. 2,207,589, issued on December 1, 1998, which sets forth a
date of first use anywhere and in commerce of March 1998.

3 Although Mr. Klaus represented the United States Patent and Trademark
Office at the oral hearing, inasmuch as the Office actions and brief
in support of the refusal to register were issued by Ms. Carruthers,
she will be referred to as the "Examining Attorney" in this appeal.
Ser. No. 75/465,247
3
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
Turning first, therefore, to consideration of the
respective goods, it is well established, as pointed out by the
Examining Attorney in her brief, that goods need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
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).

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. 75/465,247
4
Here, while acknowledging in her brief that
applicant's goods specifically exclude registrant's goods, the
Examining Attorney, in support of her contention that
applicant's various items of clothing, including footwear other
than orthopedic, diving, and athletic shoes, are nonetheless so
closely related to registrant's athletic shoes that, if marketed
under the same or similar marks, confusion as to source or
sponsorship would be likely, has made of record copies of 14
use-based third-party registrations which, in each instance,
list athletic shoes in addition to a number of the same items of
clothing as those set forth in applicant's application. While
admittedly such registrations are not evidence that the
different marks shown therein are in use or that the public is
familiar with them, the registrations nevertheless have some
probative value to the extent that they serve to suggest that
the goods listed therein are of the kinds 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. Moreover,
the Examining Attorney has made of record three other use-based
registrations, owned by the same entity as the owner of the
cited registration for athletic shoes, which cover, although
under different marks, some of the same articles of apparel as
those for which applicant seeks to register his mark, namely,
Ser. No. 75/465,247
5
jackets, shirts, shorts, sweatshirts, pants and caps. Such
evidence is sufficient to establish that applicant's goods,
while excluding athletic shoes, are still so closely related in
a commercial sense to the latter that, if sold under the same or
similar marks, confusion would be likely. The Board, in fact,
has so found. See, e.g., In re Kangaroos U.S.A., 223 USPQ 1025,
1026 (TTAB 1984) [athletic shoes and men's shirts]. Applicant,
we further observe, does not contend to the contrary in his
brief, focusing instead on the differences in the marks at
issue.
As to the respective marks, applicant argues that,
when considered in their entireties, confusion is not likely.
In particular, applicant contends that because he is also the
owner of a registration for a mark which includes the name
"DANIEL CREMIEUX" and golf player design,5 his "common ownership"
of such registration and "the present application, both of which
contains [sic] his name, is to be taken into account when
considering the scope to be given the mark here on appeal." In

5 Reg. No. 1,440,968, issued on June 2, 1987, based upon ownership of
French Reg. No. 1276042, dated July 16,1984; affidavit §8 accepted.
Among the goods included in such registration are "sport jackets,
skirts, shirts, pants, coats, raincoats, suits, jogging suits,
sweaters, pullovers, dresses, sweat suits, shorts, footwear, lingerie,
bathing suits, overalls, socks, [and] clothing belts." Curiously,
while the copy of such registration made of record by the Examining
Attorney includes the letters "DC" as part of the mark, the copy
thereof furnished by applicant does not; however, the difference is
immaterial for present purposes.

Ser. No. 75/465,247
6
this regard, applicant contends with respect to the marks at
issue herein that:
When considering the marks in their
entirety, it is clear that the only common
feature is that both include the same
letters "DCS" which in the registered mark
are essentially meaningless while in
applicant's mark ... these letters clearly
relate not only to applicant's name but also
to the type or style of his line of
clothing. With such a plethora of
differences between the respective marks,
applicant respectfully submits that
consumers purchasing applicant's goods
would, without doubt, know that they were
dealing with "Daniel Cremieux" ....

Furthermore, as to the Examining Attorney's position
that the letters "DCS" clearly form the dominant part of
applicant's mark, applicant maintains that (underlining and
italics in original):
[T]he Federal Circuit, in the case of
In re Electrolyte Laboratories, Inc., [913
F.2d 930,] 16 USPQ2d 1239 [(Fed. Cir.
1990)], has cautioned that: "There is no
general rule as to whether letters or design
will dominate in composite marks .... No
element of a mark is ignored simply because
it is less dominant, or would not have
trademark significance if used alone." Thus
it is improper to ignore any of the
different portions of applicant's composite
mark.

Applicant's mark [consequently] must
... be considered in its entirety. It is
manifestly improper to look merely at the
letters "DCS" and ignore the remainder of
the composite mark. That is not what the
consuming public does. It is believed to be
clear, and in accord with human nature, that
Ser. No. 75/465,247
7
upon noting applicant's mark (perhaps
because of the colorful nature of the mark)
attention might first be directed to the
letters "DCS" but it is submitted that
attention would immediately shift to the
line of words reading "DANIEL CREMIEUX
SPORT" so that the purchaser would certainly
be aware of the source of the goods, without
any mistake, confusion or deception.

We agree with the Examining Attorney, however, that
contemporaneous use of the marks "DCS DANIEL CREMIEUX SPORT" and
design and "DCS," in connection with, respectively, various
items of clothing and athletic shoes, would be likely to cause
confusion as to source or sponsorship. Applicant's contention
that the presence of the wording "DANIEL CREMIEUX SPORT" in his
mark serves to differentiate such mark from registrant's "DCS"
mark, due in part to applicant's ownership of a registration for
a mark which likewise includes the name "DANIEL CREMIEUX," is
not persuasive since, as the Examining Attorney properly points
out in her brief, "consumers who see applicant's pending mark
will not necessarily be familiar with his registered mark."
Moreover, even if applicant's name is regarded as his trade name
or house mark, the Examining Attorney is also correct that "the
addition of a trade name or house mark to one of two otherwise
confusingly similar marks will not obviate [a] likelihood of
confusion." See, e.g., In re Cosvetic Laboratories, Inc., 202
USPQ 842, 845 (TTAB 1979) and In re C. F. Hathaway Company, 190
USPQ 343, 344 (TTAB 1976).
Ser. No. 75/465,247
8
We also concur with the Examining Attorney that, when
considered in its entirety, applicant's "DCS DANIEL CREMIEUX"
and design mark is dominated by the term "DCS." As the
Examining Attorney accurately observes in her brief, "the
display of applicant's mark unquestionably focuses the
consumer's attention on the letters 'DCS,'" given their
prominent size in relation to the much smaller wording "DANIEL
CREMIEUX SPORT." While the latter gives meaning to the term
"DCS" in applicant's mark, the absence thereof from registrant's
mark, which contains only the arbitrary letters "DCS," does not
mean that such letters are necessarily without significance.
Instead, such letters could likewise be viewed by consumers,
especially those familiar with applicant and his "DCS DANIEL
CREMIEUX SPORT" and design mark, as an abbreviation or shorthand
form of the words "DANIEL CREMIEUX SPORT," particularly when
used in connection with such closely related items of apparel as
athletic shoes. This is especially so, we note, inasmuch as
registrant's mark, since it is registered in typed form, may be
displayed in any reasonable format, including the same blue,
white and red color combination as respectively appears in the
letters "DCS" in applicant's mark. See, e.g., INB National Bank
v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992), citing
Phillips Petroleum Co. v. C. J. Webb, Inc. 442 F.2d 1376, 170
USPQ 35, 36 (CCPA 1971). Thus, registrant's "DCS" mark must be
Ser. No. 75/465,247
9
regarded as identical in sound, appearance and connotation to
the dominant portion of applicant's mark, notwithstanding the
presence in the latter of the wording "DANIEL CREMIEUX SPORT"
and other design features which serve as a vehicle for the
display of the literal terms in applicant's mark. Overall,
applicant's "DCS DANIEL CREMIEUX SPORT" and design mark and
registrant's "DCS" mark engender a substantially similar
commercial impression.
Accordingly, we conclude that purchasers and potential
customers, who are familiar or acquainted with registrant's
"DCS" mark for its athletic shoes, would be likely to believe,
upon encountering applicant's substantially similar "DCS DANIEL
CREMIEUX SPORT" and design mark for its various items of
clothing other than orthopedic, diving, and athletic shoes, that
such closely related articles of apparel emanate from, or are
sponsored by or associated with, the same source. Such
consumers, in particular, would be likely to view applicant's
"DCS DANIEL CREMIEUX SPORT" and design products as a new or
expanded line of sportswear from the makers of registrant's
"DCS" athletic shoes and vice versa.
Decision: The refusal under Section 2(d) is affirmed.