Daron Fashions Inc.

Trademark Trial and Appeal Board

Jul 18, 2007

No. 78507267 (T.T.A.B. Jul. 18, 2007)

Mailed:
July 18, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Daron Fashions Inc.
________

Serial No. 78507267
_______

Simon Block of Katten Muchin Rosenman LLP for Daron
Fashions Inc.

Richard F. White, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Hairston, Taylor, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Daron Fashions Inc. filed an intent-to-use application
on October 28, 2004 for the mark HAWKE & CO. OUTFITTER and
Design shown below for the following goods:
Clothing, namely, jackets, coats, suits, shirts,
pants, jeans, shorts, undergarments, underwear,
pajamas, scarves, gloves, ties, belts, socks, hosiery,
footwear, swimwear, headwear, dresses, skirts,
intimate apparel, lingerie, blouses, beachwear, vests,
bathrobes, blazers, bodysuits, sweatsuits,
sweatshirts, sweatpants, sweatshorts, jogging suits,
rainwear and ski wear.

Applicant disclaimed the exclusive right to use “Co.” and
“Outfitter.”
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78507267
2

Registration was refused under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles the mark HAWK, typed
drawing, for pants as to be likely to cause confusion.1
The appeal has been fully briefed. For the reasons
set forth below we affirm the refusal.
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. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003).

A. The number and nature of similar marks in use on
similar goods.

Applicant’s primary argument in support of
registration is that registrant’s mark HAWK when used in

1 Registration No. 0509215, issued May 3, 1949; second renewal.
Serial No. 78507267
3
connection with clothing is a weak mark, entitled to only a
narrow scope of protection. Applicant submitted copies of
twenty-one (21) third-party registrations consisting in
part of the word “hawk” in Class 25.2
Evidence of third-party use falls under the sixth du
Pont factor - the "number and nature of similar marks in
use on similar goods." In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A.
1973). If the evidence establishes that the consuming
public is exposed to third-party use of similar marks on
similar goods, this evidence "is relevant to show that a
mark is relatively weak and entitled to only a narrow scope

2 Applicant only provided the first page of each registration
from the Trademark Office TARR database. Many of those
registration excerpts do not include a description of goods or a
complete description of goods. To make registrations of record,
soft copies of the registrations or the complete electronic
equivalent (i.e., printouts or electronic copies of the
registrations taken from the electronic search records of the
USPTO) must be submitted. Raccioppi v. Apogee Inc., 47 USPQ2d
1368, 1370 (TTAB 1998); In re Volvo Cars of North America Inc.,
46 USPQ2d 1455 (TTAB 1998); In re Broadway Chicken Inc., 38
USPQ2d 1559, 1560 n.6 (TTAB 1996); In re Smith & Mehaffey, 31
USPQ2d 1531, 1532 n. 3 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24
USPQ2d 1230, 1231-32 (TTAB 1992). If the applicant submits
improper evidence of third-party registrations, the examining
attorney should object to the evidence in the next Office action,
or the Board may consider the objection to be waived. See In re
Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n. 3
(TTAB 2001) (objection to evidence waived where it was not
interposed in response to applicant's reliance on listing of
third-party registrations in response to initial Office action).
In this case, examining attorney did not object to applicant’s
evidentiary submission and treated them as if they were complete
copies of the registrations. Accordingly, the registrations have
been considered and given appropriate evidentiary weight.
Serial No. 78507267
4
of protection." Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73
USPQ2d 1689, 1693 (Fed. Cir. 2005).
However, applicant submitted only copies of third-
party registrations and no evidence of third-party use.
The existence of third-party registrations alone cannot
justify the registration of another mark that is so similar
to a previously registered mark as to create a likelihood
of confusion. See, e.g., AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269-70
(C.C.P.A. 1973) (third party registrations do not aid
applicant in registering another confusingly similar mark
because they are not evidence of what happens in the
marketplace or that consumers are familiar with them); In
re Delbar Products, Inc., 217 USPQ 859, 861 (TTAB 1981)
(existence of confusingly similar marks on the Principle
Register should not aid applicant in registering another
confusingly similar mark); Maybelline Co. v. Matney, 194
UPSQ 438, 440 (TTAB 1977); American Hospital Supply v. Air
Products and Chemicals, 194 UPSQ 340, 343 (TTAB 1977).
[I]n the absence of any evidence
showing the extent of use of any such
marks or whether any of them are now in
use, they [third-party registrations]
provide no basis for saying that the
marks so registered have had, or may
Serial No. 78507267
5
have, any effect at all on the public
mind.

Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462, 463 (CCPA 1973)(Emphasis in the original).
Third-party registrations may be relevant to show that
the mark or a portion of the mark is descriptive,
suggestive, or so commonly used that the public will look
to other elements to distinguish the source of the goods or
services. Plus Products v. Star-Kist Foods, Inc., 220 USPQ
541, 544 (TTAB 1983); American Hospital Supply v. Air
Products and Chemicals, supra. Properly used in this
limited manner, third-party registrations are similar to
dictionaries showing how language is generally used. See,
e.g., Specialty Brands, Inc. v. Coffee Bean Distributors,
Inc., 748 F.2d 669, 675, 223 USPQ 1281, 1285-86 (Fed. Cir.
1984); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915,
917, 189 USPQ 693, 694-95 (C.C.P.A. 1976); In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Dayco
Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911 (TTAB 1988);
In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987);
United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174
(TTAB 1987). However, the dictionary definitions of the
word “hawk” provide no insight as to any descriptive or
Serial No. 78507267
6
suggestive meaning or any reason competitors in the
clothing field would need to adopt and use that word.3
Even if the third-party registrations were sufficient
to establish that “hawk” is a suggestive or descriptive
term entitled to only a narrow scope of protection or
exclusivity of use, even weak marks are entitled to be
protected against the registration of the same or similar
marks for closely related goods or services. Giant Food
Inc. v. Rosso and Mastracco, Incorporated, 218 USPQ 521,
526 (TTAB 1982); In re Industrial Expositions, Inc., 194
USPQ 456, 459 (TTAB 1977); Hollister Incorporated v. Ident
A Pet, 193 USPQ 439, 442 (TTAB 1976).
As discussed infra, the addition to applicant’s mark
of the descriptive terms “Co.” and “Outfitters” and the
oval background do not create a viable distinction with the
registered mark. On the other hand, the third-party
registrations submitted by applicant contain nondescriptive
terms upon which a viable distinction between the marks
could be made (e.g., HAWK’S LANDING, SILVER HAWK and wing
design, SHADOW HAWK, etc.). In fact, some of the “Hawk”

3 Applicant submitted a dictionary definition of the word “hawk”
from Merriam-Webster Online (www.m-w.com). The word “hawk” has
three definitions, including (1) any number of diurnal birds of
prey, (2) a small board or metal sheet with a handle on the
underside used to hold mortar, and (3) one who takes an
aggressive attitude and advocates immediate action such as a
supporter of war.
Serial No. 78507267
7
registrations identify collateral merchandising products
sold by sporting teams which further distinguish these
third-party registrations (e.g., MILWAUKEE HAWKS, ATLANTA
HAWKS, BOISE HAWKS BASEBALL CLUB, CHICAGO BLACK HAWKS,
HUNTER COLLEGE HAWKS).
We find that the number and nature of similar marks in
use on similar goods is a factor that favors finding a
likelihood of confusion.

B. The similarity or dissimilarity and nature of the
goods.

The mark in the cited registration is used to identify
pants, and pants are one of the products listed in the
application. The goods are, therefore, essentially
identical. This is a factor that favors finding a
likelihood of confusion.

C. The similarity or dissimilarity of established, likely
to continue trade channels.

Given that the goods are nearly identical and there
are no restrictions or limitations in the description of
goods, we must presume that the products set forth in the
application and registration will be sold in the same
channels of trade and will be bought by the same classes of
purchasers. Canadian Imperial Bank v. Wells Fargo Bank,
Serial No. 78507267
8
811 F.2d 1490, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987); In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). In
view thereof, the similarity of the channels of trade is a
factor that favors finding a likelihood of confusion.

D. The conditions under which and buyers to whom sales
are made.

As indicated supra, because there are no restrictions
or limitations in the descriptions of goods, we must
presume that the goods are sold to the same classes of
consumers. Purchasers of pants comprise a broad market
consisting of both discriminating and ordinary consumers
who may give relatively less time and individual attention
to trademarks. Pants, which are frequent and routine
purchases, may involve a lower level of consumer care than
an infrequently purchased product. In view thereof, the
conditions under which and buyers to whom sales are made is
a factor that favors finding a likelihood of confusion.

E. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation, and
commercial impression.

Turning to the marks, we begin with the premise that
when marks appear on virtually identical goods, the degree
of similarity necessary to support a conclusion of
Serial No. 78507267
9
likelihood of confusion declines. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 824, 23 UPSQ2d
1698, 1700 (Fed. Cir. 1992, cert. denied, 506 U.S. 1034
(1992). As is obvious, the common element of the two marks
is the words “Hawk” and “Hawke.” The Examining Attorney
contends that “Hawke” and “Hawk” are the dominant portions
of both marks, while applicant argues that when the marks
are compared in their entireties the other portions of
applicant’s mark are sufficient to distinguish them.
Both applicant and the Examining Attorney recognize
the well-established principle that, in articulating the
reasons for reaching a conclusion on the issue of
likelihood of confusion, there is nothing improper in
stating that, for logical reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in
their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In addition, under actual marketing conditions,
consumers do not necessarily have the luxury of making
side-by-side comparisons between marks, and must rely on
their imperfect recollections. Dassler KG v. Roller Derby
Skate Corp., 206 USPQ 255, 259 (TTAB 1980).
Serial No. 78507267
10
In this case, applicant’s mark, HAWKE & CO. OUTFITTER
in an oval design, incorporates in its entirety
registrant’s HAWK trademark as its most distinctive and
dominant feature. Neither the addition of the term “& Co.
Outfitters,” nor the design element (or combination
thereof) offer sufficient distinctiveness to create a
different commercial impression. In re Xerox Corp., 194
USPQ 449 (TTAB 1977) (the addition of a descriptive word is
an insufficient basis upon which to predicate a viable
distinction between marks). Thus, for our purposes,
applicant’s mark and the registrant’s mark are
substantially similar.
The term “& Co.” is simply an entity designation, and
therefore it carries no trademark significance. Similarly,
the word “outfitter” indicates a store that sells clothing
or other equipment. According to Merriam-Webster Online,
“outfitter” is defined as follows:
one that outfits: as a: Haberdasher b:
a business providing equipment,
supplies, and often trained guides (as
for hunting trips); also: a guide for
such an outfitter.4

Also, the Examining Attorney submitted several
websites that use the term “outfitter” to describe retail

4 Applicant’s Request for Reconsideration; Applicant’s November
17, 2005 Response.
Serial No. 78507267
11
clothing store services (e.g., Winnipeg Outfitters Inc.,
Uncle Sam’s Army Navy Outfitters, Half-Moon Outfitters,
Sonoma Outfitters).5 Accordingly, the word “outfitter” is
descriptive, if not generic, for retail store services and
as such has little, if any, trademark significance.
The oval background design in applicant’s mark, though
visually prominent, is less significant than the words.
This is because the oval design is an ordinary geometric
shape that serves as a background for the words. In
addition, when a mark comprises both wording and a design,
consumers will use the words to request the identified
goods. In re Appetito Provisions Co., 3 USPQ2d 1553, 1554
(TTAB 1987).
Further the term HAWKE & CO. in applicant’s mark is
larger than the word “Outfitter” and it also occupies the
center of the oval background design. Thus, HAWKE & CO. is
the portion of applicant’s mark to which the viewer is
drawn, as well as the portion that the viewer is most
likely to remember.
The words “hawk” and “hawke” are virtually identical.
The addition of the letter “e” to the end of the “hawk”
portion of applicant’s mark does not sufficiently
distinguish it from the registrant’s mark. See In re Home

5 The January 19, 2006 and June 6, 2005 Trademark Office Actions.
Serial No. 78507267
12
Federal Savings and Loan Association, 213 UPSQ 68, 69 (TTAB
1982) (“That applicant’s mark ‘TRAN$FUND’ has a dollar
where registrant’s mark has a letter ‘S’ is inconsequential
in a comparison of the sound, appearance, and meaning of
the two marks); Goodyear Tire & Rubber Co. v. Dayco Corp.,
201 USPQ 485, 488 n. 1 (TTAB 1978)(“Fast-Finder” with a
hyphen is the equivalent of “Fastfinder” without a hyphen);
In re Strathmore Products, Inc., 136 USPQ 81, 82 (TTAB
1962) (GLISS’N is simply a contraction of GLISTEN and
therefore they have the same meaning).
Finally, as discussed supra, there is insufficient
evidence of record to support a finding that HAWK or HAWKE
has a recognized meaning in the clothing field. The word
“hawk” has a commonly understood meaning as a bird of prey.
Since registrant uses the mark HAWK for clothing, it is not
descriptive or suggestive. Thus, the word “Hawk” is at
least distinctive, if not arbitrary, as used in connection
with clothing.
For the preceding reasons, we believe that consumers
are likely to believe that both marks are variations of
each other and indicate a single source for the goods.
Accordingly, the similarity of the marks favors finding
that there is a likelihood of confusion.
Serial No. 78507267
13
Considering the totality of applicant’s mark and the
nature of the word “hawk” in connection with clothing, we
are of the opinion that applicant’s HAWKE & CO. OUTFITTERS
and Design for clothing, including pants, so resembles HAWK
for pants as to be likely to cause confusion.
Decision: The refusal to register is affirmed.