Golden Too, Inc.

Trademark Trial and Appeal Board

Jul 8, 2003

No. 76201648 (T.T.A.B. Jul. 8, 2003)

Mailed: July 8, 2003
Oral Hearing Date: Paper No. 16
May 27, 2003 GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Golden Too, Inc.
________
Serial No. 76/201,648
_______
Charles P. LaPolla and Mary G. Fontenot of Ostrolenk, Faber, Gerb
& Soffen, LLP for Golden Too, Inc.
Michael W. Baird, Trademark Examining Attorney, Law Office 109
(Ronald R. Sussman, Managing Attorney).
_______
Before Hohein, Hairston and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Golden Too, Inc. has filed an application to register
the mark "GOLDEN TOO" for "clothing, namely, shirts, pants,
skirts, vests, jackets and suits."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 its goods, so resembles the
mark "GOLDEN" and design, which is registered as reproduced below
1 Ser. No. 76/201,648, filed on January 30, 2001, which is based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/201,648
2
for a "clothing line, namely, blouses, ladies['] pants and skirt
suits, jumpsuits, shorts, slacks, blazers, bathing suits, belts,
hats and ski suits,"2 as to be likely to cause confusion, or
mistake or to deceive.
Applicant has appealed. Briefs have been filed and an
oral hearing was held. 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 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.3
Turning first to consideration of the respective goods,
it is clear that applicant's items of clothing are identical in
part (e.g., ladies' pants and skirt suits ) and are otherwise
closely related to the products in registrant's clothing line.
2 Reg. No. 2,209,122, issued on December 8, 1998, which sets forth a
date of first use anywhere and in commerce of November 15, 1997.
3 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. 76/201,648
3
Suffice it to say that both applicant and registrant are
marketing the kinds of wearing apparel which would be sold to the
same classes of consumers (e.g., women and teenage girls) through
the same channels of trade (e.g., clothing stores, department
stores, mass merchandisers, and boutiques). Although applicant
argues in its initial brief that purchasers of clothing "are
somewhat sophisticated" in that they "are usually quite
particular over the quality and nature of the goods being sold,"
the substantial majority of customers for wearing apparel plainly
are not highly discriminating professional buyers but are instead
simply ordinary consumers who typically would exercise nothing
more than reasonable care in their selection and purchasing of
wearing apparel.4 For ordinary consumers, purchasing decisions
with respect to items of clothing may frequently involve or be
based on such impulsive considerations as matters of style and
comfort and are not dependent solely upon strictly pragmatic
factors like product value and durability. In short, not only
are the classes of customers the same, but the conditions under
which applicant's and registrant's goods are offered for sale are
such that, if marketed under the same or similar marks, confusion
as to their source or sponsorship is likely to occur.
Turning, therefore, to consideration of the respective
marks, applicant contends in its initial brief that, "[b]y
4 As the Examining Attorney acknowledges in his brief, while "there is
a segment of the population who can be considered sophisticated
purchasers of clothing," "it is clear that a significantly larger
segment of the purchasing public is 'unsophisticated'" since, "with
the possible exception of radical naturalists, every resident of the
United States wears clothing."
Ser. No. 76/201,648
4
failing to give appropriate consideration to the term TOO in
Applicant's mark and the distinct design element in the cited
mark, the Examining Attorney has failed to analyze the marks in
their entireties." Specifically, applicant argues that:
Looked upon in its entirety, Applicant's
mark GOLDEN TOO has a different appearance
and pronunciation from the cited GOLDEN And
Design mark. As a result of the additional
term TOO in Applicant's mark and the
distinguishing distinctive design in the
cited registration, a consumer, when
encountering these marks in the marketplace,
would not only perceive the different
appearances of the marks, but would also
pronounce Applicant's mark in a different
manner from the cited registration.
Applicant also asserts that the Examining Attorney failed to take
into account the evidence it presented to show that registrant's
"GOLDEN" and design mark is weak and, as such, is entitled only
to a narrow scope of protection. In particular, applicant states
in its initial brief that it is well settled that "a finding of
likelihood of confusion cannot be predicated upon the presence in
each mark of a weak or suggestive term, when the remaining
portions of that mark differ in appearance, sound and/or
meaning."
As support for its assertion that "the similarity of
the term GOLDEN must be de-emphasized due to the common and weak
nature" thereof, applicant relies upon copies which it made of
record of 11 "co-existing federal registrations [for marks] which
utilize the word GOLDEN in connection with clothing" as well as
copies it placed in the record of "numerous other [registrations
for] trademarks incorporating the term GOLDEN for items in
Ser. No. 76/201,648
5
International Class 25."5 Applicant urges, in view thereof,
that:
The foregoing registrations show that
use of the GOLDEN designation, with another
word or words, is very common. Such
widespread use, the majority of which is for
goods directly related to those used under
Applicant's mark and the cited registration,
indicates that the cited GOLDEN And Design
mark is weak and co-exists in a crowed field
of "Golden" marks with regard to goods sold
in International Class 25. .... As such,
the cited registration is not entitled to
strong trademark protection. ....
Furthermore, according to applicant, "[i]t is particularly
noteworthy that many of the co-existing marks incorporating the
term GOLDEN ... contain only single additional words which are
certainly no more distinctive or distinguishing than the term
TOO, e.g., A.M., SMILE, BAY, HORDE, WEST, etc." Applicant
insists that, likewise, the differences between the marks at
issue herein "are significant enough to avoid a likelihood of
confusion."
The Examining Attorney, on the other hand, correctly
points out that "the mere existence of third-party registrations
does not constitute evidence of the use of the marks shown
therein, or that the public is familiar [with] the marks" and is
therefore able to distinguish the source thereof based upon the
differences in such marks. See, e.g., AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA
1973); In re Hub Distributing, Inc., 218 USPQ 284, 285-86 (TTAB
5 The latter, applicant indicates, include "at least seventy registered
marks, one published mark, and at least sixty canceled and expired
registrations--all of which currently co-exist on the Principal
Register or co-existed on the Principal Register at various times."
Ser. No. 76/201,648
6
1983); and National Aeronautics & Space Administration v. Record
Chemical Co., Inc., 185 USPQ 563, 567 (TTAB 1975). Nonetheless,
as applicant realizes in its reply brief, such registrations may
properly be given some weight to show the meaning of a mark in
the same way that dictionary definitions would be so used. See,
e.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693, 694-95 (CCPA 1976). In view thereof, and citing the
definition attached to its reply brief from The American Heritage
Dictionary of the English Language (4th ed. 2000) which shows
that "the term GOLDEN can have the meanings of 'favorable,'
'precious,' 'excellent,' 'gifted' and 'promising,'"6 applicant
maintains that "the weight attached to such a common and
laudatory term should be discounted when considering the issue of
likelihood of confusion" because consumers will rely instead on
the presence of other elements to distinguish among marks
containing the term "GOLDEN."
Applicant, in consequence of the above, argues in its
reply brief that, as assertedly indicated in the file wrapper for
the cited registration, "the design element is the representation
6 Specifically, such term is defined as an adjective meaning "1. Of,
relating to, made of, or containing gold. 2a. Having the color of
gold or a yellow color suggestive of gold. b. Lustrous; radiant: the
golden sun. c. Suggestive of gold, as in richness or splendor: a
golden voice. 3. Of the greatest value or importance; precious. 4.
Marked by peace, prosperity, and often creativeness: a golden era.
5. Very favorable or advantageous; excellent: a golden opportunity.
6. Having a promising future; seemingly assured of success: a golden
generation. 7. Of or relating to a 50th anniversary." We have
considered such definition inasmuch as it is settled that the Board
may properly take judicial notice of dictionary definitions. See,
e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d
737, 97 USPQ 330, 332 (CCPA 1953); University of Notre Dame du Lac v.
J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper
Mills, Inc. v. American Can Co., 212 USPQ 852, 860 n. 7 (TTAB 1981).
Ser. No. 76/201,648
7
of an egg" and thus "the connotation of the cited mark is 'GOLDEN
EGG.'" Applicant further argues that "[e]ven without considering
... the file wrapper for the cited mark, it is obvious that the
design element of the [registrant's] mark is an egg, thus
connoting 'GOLDEN EGG.'" By contrast, applicant states, "the
additional word element in Applicant's mark is TOO[,] which does
not bring to mind an egg" and thereby serves to distinguish its
"GOLDEN TOO" mark from registrant's "GOLDEN" and design mark.
Specifically, besides the absence of an egg design element from
its mark, applicant urges that:
The Examining Attorney also unduly
discounts the distinguishing differences
created by the additional term TOO in
Applicant's mark. The term TOO does not
merely convey more of what precedes the term.
Rather the term TOO has a certain ambiguity
capable of alternative meanings. Some
persons may view the term TOO in a manner
equivalent to the number "2." For those who
view the word TOO as meaning "more" or
"also," there is ambiguity and alternative
possibilities as to what is being qualified
by the term TOO. For example, especially due
to the multiple and laudatory connotations
associated with the term GOLDEN, some persons
may view the Applicant's mark as meaning TOO
COOL, or TOO STYLISH, TOO BEAUTIFUL, TOO
FASHIONABLE, or IN TOO GOOD OF OR FAVORABLE A
POSITION.
Applicant concludes, in its reply, that there is no likelihood of
confusion from the contemporaneous use of the respective marks in
connection with articles of clothing because, due to the weakness
of the term "GOLDEN," such term "is not the primary element of
each mark and the overall elements of each mark create a
different commercial impression in the minds of consumers."
Ser. No. 76/201,648
8
We agree with the Examining Attorney, however, that
when considered in their entireties, the marks at issue are so
substantially similar in sound, appearance, connotation and
commercial impression that the contemporaneous use thereof in
connection with identical and closely related items of clothing
is likely to cause confusion as to the origin or affiliation of
such products. Specifically, due to the shared term "GOLDEN,"
which forms the dominant element of each mark (for the reasons
discussed below), it is obvious that applicant's "GOLDEN TOO"
mark and registrant's "GOLDEN" and design mark are substantially
similar both aurally and visually. As to the former,
registrant's mark would most likely be pronounced simply as
"GOLDEN," rather than "GOLDEN EGG" as contended by applicant in
its reply brief, especially since there is nothing about any of
the items in registrant's line of clothing which would tend to
suggest that, when its mark is used in connection therewith, the
mark is meant by registrant to be pronounced as if it were the
words "GOLDEN EGG" or that consumers would so regard it. Thus,
while concededly such design is recognizable upon reflection as
an egg design, there is nothing in the nature of the associated
goods or otherwise which indicates that at first glance consumers
would view or understand the design element in registrant's mark
as forming anything other than a background design or vehicle for
the display of the word "GOLDEN."
While the same, obviously, is likewise true as to the
appearance of registrant's mark, it remains the case that the
word "GOLDEN" appears as a prominent, if not the dominant,
Ser. No. 76/201,648
9
element thereof. Consequently, irrespective of whether consumers
would regard the design element in such mark as merely a display
for the word "GOLDEN" or would see the design as that of an egg,
it must still be kept in mind, as alluded to by the Examining
Attorney, that because applicant seeks to register its "GOLDEN
TOO" mark in typed form, the display thereof could include the
same stylized manner of lettering as that utilized by registrant
for the word "GOLDEN" in its mark. See, e.g., Phillips Petroleum
Co. v. C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA
1971) [a mark registered in typed format is not limited to the
depiction thereof in any special form]; and INB National Bank v.
Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992) ["[a]s the
Phillips Petroleum case makes clear, when [an] applicant seeks a
typed or block letter registration of its word mark, then the
Board must consider all reasonable manners in which ... [the
word] could be depicted"]. Thus, in addition to sounding
substantially alike, applicant's and registrant's marks are
substantially similar in overall appearance.
Moreover, due to the dominance in each mark of the term
"GOLDEN, the marks at issue are also substantially similar in
connotation and overall commercial impression. The Examining
Attorney, citing the definition attached to his brief from The
American Heritage Dictionary of the English Language (3rd ed.
1992) which defines the word "TOO" as an adverb meaning, inter
alia, "1. In addition; also: He's coming along too. .... 2.
More than enough; excessively: She worries too much. .... 4.
Very; extremely; immensely: He's only too willing to be of
Ser. No. 76/201,648
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service. 5. Informal. Indeed; so: You will too do it!,"7
persuasively contends in this regard that the dominant element of
applicant's mark is the word "GOLDEN." As the Examining Attorney
states in his brief: "The term GOLDEN does not modify the term
TOO; instead, the word TOO merely emphasizes that the primary
term [in applicant's mark] is GOLDEN." We also concur with the
Examining Attorney that the dominant element of registrant's mark
is the term "GOLDEN" since, as he correctly points out: "When a
mark consists of a word portion and a design portion, [it is] the
word portion [which] is more likely to be impressed upon a
purchaser's memory and to be used in calling for the goods ...."
See, e.g., In re Appetito Provisions Co. Inc., 3 USPQ2d 1553,
1554 (TTAB 1987). Such is particularly the case where, as here,
the design element in registrant's mark principally serves,
especially at first glance, as a background or vehicle for the
display of the word "GOLDEN."
In consequence of the above, we agree with the
Examining Attorney that consumers of clothing who are familiar or
acquainted with registrant's mark "GOLDEN" and design "are likely
to come to the conclusion that Applicant's goods are GOLDEN-brand
'also'" inasmuch as the word "TOO" in applicant's mark "GOLDEN
TOO" is most likely to signify that its goods are, in addition,
"GOLDEN" in some manner. The same is similarly the case even if
the word "TOO" in applicant's mark is regarded by some purchasers
as meaning, instead of "also," either "excessively" or
7 Judicial notice has been taken thereof as implicitly requested by the
Examining Attorney.
Ser. No. 76/201,648
11
"extremely" or as denoting "indeed" or "so." Such would still be
the case among customers who notice the design element in
registrant's mark as those purchasers would be likely to regard
applicant's "GOLDEN TOO" mark as designating a new or additional
line of clothing items from the same source as the line of
clothing marketed under registrant's "GOLDEN" and design mark.
Admittedly, the third-party registrations made of
record, as well as the dictionary definition of the word
"GOLDEN," serve to demonstrate that such word has been frequently
incorporated into marks for clothing because of its laudatory
significance. The fact that such word is therefore weak in terms
of its trademark significance does not mean, however, that
registrant's mark is entitled to protection only against the same
or a virtually identical mark. It is well established, instead,
that even a weak mark is entitled to protection against the
registration of the same or a substantially similar mark for
identical and/or closely related goods. See, e.g., Plus Products
v. Physicians Formula Cosmetics, Inc., 198 USPQ 111, 114 (TTAB
1978); and In re Textron Inc., 180 USPQ 341 (TTAB 1973), citing
Eastern Industries, Inc. v. Waterous Co., 289 F.2d 952, 129 USPQ
422, 424 (CCPA 1961). Such is the case herein.
In particular, the third-party registrations referenced
by applicant are entitled to little weight on the question of
likelihood of confusion. See, e.g., In re Hub Distributing,
Inc., supra at 285. Such registrations, as previously indicated,
are not evidence that the marks shown therein are in use or that
the public is familiar with them and, in any event, the existence
Ser. No. 76/201,648
12
on the register of arguably similar marks cannot aid an applicant
in its effort to register another mark which so resembles a
registered mark as to be likely to cause confusion. See, e.g.,
AMF Inc. v. American Leisure Products, Inc., supra; and Lilly
Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406,
407 (CCPA 1967). In this case, none of the marks relied upon by
applicant is as substantially similar to applicant's mark as is
registrant's mark. Instead, as the Examining Attorney cogently
argues:
The other registrations referenced by
Applicant can be easily distinguished: in
all the referenced registrations, the term
GOLDEN is used as an adjective or adverb,
modifying additional wording in the
respective marks ("GOLDEN SMILE," "GOLDEN
BAY," "GOLDEN HORDE," etc.) The [cited]
registered mark, on the other hand, is
composed solely of the term GOLDEN [as the
literal element thereof]. It [thus] lacks
any additional wording and "GOLDEN" does not
modify any other term.
Consequently, unlike the marks which are the subjects
of the third-party registrations relied upon by applicant, the
Examining Attorney is correct that the marks at issue herein
"have no additional distinctive wording which may serve as a
basis to distinguish the marks" (emphasis in original). As a
result, the Examining Attorney properly notes that, while "the
registrations presented by Applicant clearly refer to golden
things, the marks in the cited registration and the application
use the term GOLDEN in a more nebulous manner, evoking the idea
of gold, as opposed to any one specific object" (emphasis in
original). Therefore, although the word "GOLDEN" is weak in view
of its laudatory significance, we share the Examining Attorney's
Ser. No. 76/201,648
13
view that it is not lacking in distinctiveness and that the
addition thereto of the word "TOO" to form applicant's "GOLDEN
TOO" mark does not create either a new or sufficiently different
commercial impression from registrant's "GOLDEN" and design mark
as to preclude a likelihood of confusion when such marks are used
in connection with the same and closely related items of
clothing. See, e.g., BAF Industries v. Pro-Specialties, Inc., 206
USPQ 166, 175-76 (TTAB 1980) [while dictionary and third-party
registration evidence reflected that term "PRO," as a recognized
abbreviation for the word "professional," had a laudatory
connotation such that marks which consisted of or included the
term consequently were weak marks which were entitled to only a
narrow scope of protection, the addition of the term
"SPECIALTIES" to form the mark "PRO-SPECIALTIES" for use in
connection with a variety of detergents, cleaners, polishes and
waxes was insufficient to distinguish the mark from, and avoid a
likelihood of confusion with, various "PRO" marks for a variety
of products including waxes, polishes and cleaners].
We accordingly conclude that purchasers and prospective
customers, familiar or acquainted with registrant's "GOLDEN" and
design mark for a "clothing line, namely, blouses, ladies[']
pants and skirt suits, jumpsuits, shorts, slacks, blazers,
bathing suits, belts, hats and ski suits," could reasonably
assume, upon encountering applicant's substantially similar
"GOLDEN TOO" mark for "clothing, namely, shirts, pants, skirts,
vests, jackets and suits.," that such identical and otherwise
closely related items of apparel emanate from, or are sponsored
Ser. No. 76/201,648
14
by or affiliated with, the same source. Furthermore, to the
extent that we may nevertheless entertain any doubt as to this
conclusion, we resolve such doubt, as we must, in favor of the
registrant. See, e.g., In re Martin's Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); and In
re Pneumatiques Caoutchouc Manufacture et Plastiques Kelber-
Columbes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal under Section 2(d) is affirmed.