Diane R. Gunter

Trademark Trial and Appeal Board

Aug 20, 2010

No. 77227513 (T.T.A.B. Aug. 20, 2010)

Hearing: Mailed:
July 27, 2010 August 20, 2010
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Diane R. Gunter
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Serial No. 77227513
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Erik M. Pelton of Erik M. Pelton & Associates, PLLC for
Diane R. Gunter

Renee McCray, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
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Before Seeherman, Bucher and Bergsman, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Diane R. Gunter seeks registration on the Principal
Register of the mark Wish you were here (in standard character
format) for “underwear” in International Class 25.1
The Trademark Examining Attorney issued a final refusal
to register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has taken the position that applicant’s mark, when
used in connection with the identified goods, so resembles
the following mark:

1 Application Serial No. 77227513 was filed on July 11, 2007
based upon applicant’s claims of first use anywhere at least as
early as May 1, 2006 and first use in commerce at least as early
as May 31, 2007.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77227513
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registered for “women’s dresses, shirts, skirts and apparel”
also in International Class 25,2 as to be likely to cause
confusion, to cause mistake or to deceive.
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board. Applicant and the
Trademark Examining Attorney filed briefs in this matter,
and appeared at a hearing held before this panel of the
Board. We reverse the refusal to register.
In support of her refusal, the Trademark Examining
Attorney argues that consumers are generally more inclined
to focus on the first portion of a mark; that applicant’s
mark is substantially similar to the registrant’s mark as to
appearance, pronunciation, meaning and commercial

2 Registration No. 3129654 issued to Jetsy, Inc. on August 15,
2006.

Serial No. 77227513
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impression; that the courts and this Board have
specifically found underwear to be related to clothing
items included within the rubric of outer clothing; and
that the respective goods will move through the same
channels of trade to the same classes of ordinary
purchasers.
By contrast, in urging registrability, applicant
contends that the differences between applicant’s and
registrant’s goods, combined with the stark differences in
the marks as to appearance, connotations and overall
commercial impressions, prevent any likelihood of confusion
between its mark and the cited mark.
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on this issue. See 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); and In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, however, two key, although not
exclusive, considerations are the similarities between the
marks and the relationship between the goods and/or
Serial No. 77227513
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services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the du Pont factor focusing on the
similarities or dissimilarities in the appearance, sound,
connotation and commercial impression of the respective
marks. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
The Trademark Examining Attorney concludes her brief
with the following summary:
The substantial similarities in appearance,
sound, connotation and commercial
impression engendered by the dominant
identical wording in the marks outweigh the
slight differences created by the additional
wording and design elements in registrant’s
mark.

Applicant, in turn, argues that “the Examining Attorney
does not place proper emphasis on the dominant elements of
the cited design mark that are not shared with Applicant’s
mark, namely the phrase Love Jetsy and the unshared postcard
design element, both of which are the dominant features of
the cited design mark.” Applicant’s reply brief at 1.
On this point, we agree with applicant. Registrant’s
mark is a composite where the image of a postcard is
significant, and this postcard serves as background for the
arbitrary and prominent words “Love, Jetsy.” Yet the
Trademark Examining Attorney focuses primarily on the phrase
Serial No. 77227513
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“Wish you were here!” She argues that because this phrase
is the first portion of registrant’s mark, it is more
likely to be impressed upon a purchaser’s memory than words
found later in the composite.
However, we cannot agree with the Trademark Examining
Attorney’s position that the phrase “Wish you were here!” is
the dominant element of applicant’s mark. As depicted in
the drawing, the words “Love, Jetsy” are prominently
displayed, comprising the largest element on the card. The
words “Love, Jetsy” and the overall postcard design are very
noticeable and they have the effect of catching the eye and
engaging the viewer before the viewer even looks at the
phrase “Wish you were here!” In this context, the “Wish you
were here!” phrase is a postcard cliché that acts merely to
reinforce the design element of the postcard, and would not
otherwise make an impression on the viewer. Because of the
strong visual impact of the words “Love, Jetsy” and the
postcard design in the cited mark, we find that applicant’s
mark “Wish you were here” differs significantly in
appearance, pronunciation, connotation and commercial
impression from registrant’s composite mark. See Parfums de
Coeur Ltd. v. Lazarus, 83 USPQ2d 1012 (TTAB 2007).
We turn next to the du Pont factor of the relatedness
of the respective goods. In this regard, the Trademark
Examining Attorney argues as follows:
Serial No. 77227513
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Clearly, shirts and apparel could encompass
underwear, as well as t-shirts which may be
worn under outerwear. Thus, the goods are
similar in nature …

Again, we are not persuaded by the Trademark Examining
Attorney’s position. We are not prepared to equate the
“shirts” identified in the registration with T-shirts that
are worn as underwear, such that the identification of
“shirts” encompasses “underwear.” Although the term
“t-shirt” may identify clothing items that are worn as
underwear or as outerwear, the term “shirts” in this case
cannot be read so broadly as to include underwear.
Nor do we read the term “apparel” in the identification
as encompassing “underwear.” We take judicial notice of
various dictionary definitions of the word “apparel”:
ap·par·el –noun
1. clothing, esp. outerwear; garments; attire; raiment.
—Synonyms clothes, dress, garb, costume, habiliments, vesture. 3
apparel —n
1. something that covers or adorns, esp outer garments or clothing.4

These definitions support the conclusion that “apparel”
is not a synonym for “clothing,” but rather, that apparel is
generally read as meaning “outer garments.” This is
consistent with the balance of registrant’s identification
of goods, namely, “dresses, shirts, skirts” – all clearly

3 RANDOM HOUSE DICTIONARY, 2010.

4 COLLINS ENGLISH DICTIONARY, 10th Edition, 2009.
Serial No. 77227513
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intended to be worn as external/outer items of “street
clothing.” Further, this interpretation is consistent with
Office practice as to the identification of goods. The term
“clothing” per se is not permitted as an identification of
goods as it is considered too broad and indefinite a term.
If “apparel” were merely a synonym for “clothing,” it would
suffer the same infirmity. Thus, we do not treat the
registrant’s identification of goods as encompassing
applicant’s goods, and must consider the evidence submitted
by the Trademark Examining Attorney to show that the goods
are related.
The Trademark Examining Attorney attached to the Office
action of October 14, 2008 multiple pages of screenprints
from two different websites – one of “MacRAE’S Blue Book –
America’s Original Industrial Directory Since 1983,” as well
as “Underwear–Loungewear Factory Directory (CMT Clothing
Factories).”
The Internet evidence drawn from these directories
relates to clothing manufacturers. These listings indicate
that these vendors make, or can make upon request, both
underwear and outer clothing. However, this evidence is of
very limited probative value as there is no indication that
the goods are sold under the same marks, or that the general
public would be aware of these listings or of the
Serial No. 77227513
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manufacturers, the majority of which are not located in the
United States.
The Trademark Examining Attorney has also submitted web
pages from two online retailers – OLD NAVY and dELiA’s.
The OLD NAVY webpage has the following listing:
WOMEN
Shop by Category
Tees & Polos
Camis & Tanks
Shirts
Sweaters
Outerwear
Suit Collections
Jeans
Pants
Shorts
Skirts
Dresses
Activewear
Loungewear
Bras
Panties
Swimwear 5

This left-sidebar menu on Old Navy’s online sales page
for “Women” shows that Old Navy sells outer (or exterior)
clothing and outerwear (e.g., coats, jackets, etc.), as well
as women’s underwear (e.g., bras, panties, etc.). However,
on this record, we cannot know whether, for example, OLD NAVY
sells both types of goods under different product marks, or
whether it uses its house mark with all such clothing items.
At most, we view this evidence as showing that underwear and
apparel are sold in the same channels of trade to the same
classes of purchasers.

5 http://oldnavy.gap.com/browse/division.do?cid=5360.
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Similarly, while it is difficult to decipher, it
appears as if the dELiA’s ad does include the category of
“undies” under the Apparel heading.6
Either because of an oversight in drafting, or as a
means of emphasizing the point, the Trademark Examining
Attorney lists twice in her brief (at unnumbered 10 and 12)
many of the same cases in the clothing field which have held
that many different types of clothing are related under
Section 2(d) of the Lanham Act, including Board cases
concluding that on the facts of the particular case,
underwear is related to street clothes. However, we cannot
take judicial notice of facts in earlier reported decisions
where the Board may have found goods or trade channels to be
related under the facts presented during the litigation of
that case.
Thus, the strongest pieces of evidence supporting the
position of the Trademark Examining Attorney are the
excerpts from the OLD NAVY and dELiA’s websites. However,
these two instances of a trade channel overlap between
underwear and “women’s dresses, shirts, skirts and apparel”
is not sufficient to demonstrate that underwear is closely
related to registrant’s listed goods.

6 http://store.delias.com/browse.do?categoryID=1233&
sidenavTrack=apparel.bestof
Serial No. 77227513
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We do not suggest that underwear and items of apparel
are not related goods. Clearly one might buy underwear to
fit under a particular dress or shirt. However, on this
record we cannot say that applicant’s underwear and the
registrant’s goods are so closely related that – especially
when considered in connection with the strong differences in
the marks – consumers are likely to be confused into
believing that applicant’s underwear and the registrant’s
items of apparel emanate from the same source.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is hereby reversed.