Homie International Corp.

Trademark Trial and Appeal Board

Jan 17, 2012

No. 85006121 (T.T.A.B. Jan. 17, 2012)

Mailed:
January 17, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Homie International Corporation
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Serial No. 85005921
Serial No. 85006121
_______

John S. Child of Paul and Paul for Homie International
Corporation.

Edward Nelson, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Grendel, Kuhlke and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Homie International Corporation (“applicant”) filed
intent-to-use applications for the marks HOMIES and HOMIE,
in standard character form, both for “athletic bags and
back packs,” in Class 18.
The examining attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s marks, when used
in connection with “athletic bags and back packs” so
resembles the registered mark HOMIES and design, shown
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77879157
2
below, for “clothing, namely, t-shirts and hats,” in Class
25,1 as to be likely to cause confusion.

Because both applications are owned by the same entity
and involve identical questions of fact and law, we have
consolidated the appeals.
Preliminary Issue
Applicant submitted exhibits with its appeal brief.
The examining attorney did not object or address the
evidence attached with the brief. Trademark Rule 2.142(d)
addresses the submission of evidence submitted after an
appeal is filed:
The record in the application should be
complete prior to the filing of an
appeal. The Trademark Trial and Appeal
Board will ordinarily not consider
additional evidence filed with the
Board by the appellant or by the
examiner after the appeal is filed.

Evidence submitted after appeal, without a granted
request to suspend and remand for additional evidence, see
TBMP § 1207.02, may be considered by the Board, despite its

1 Registration No. 1965095, issued April 2, 1996; renewed.
Serial No. 77879157
3
untimeliness, if the nonoffering party (1) does not object
to the new evidence, and (2) discusses the new evidence or
otherwise affirmatively treats it as being of record. TBMP
§ 1207.03. Although the examining attorney did not object
to the late filed evidence, he did not discuss it or
otherwise treat it as being of record. Accordingly, the
exhibits attached the applicant’s brief are untimely and we
have not considered them.
Likelihood of Confusion
Our determination of likelihood of confusion 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). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).

Serial No. 77879157
4
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours &
Co., 177 USPQ at 567. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1987). In comparing the marks, we are mindful that
the test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of overall
commercial impression so that confusion as to the source of
the goods offered under the respective marks is likely to
result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1835,
1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir.
June 5, 1992).
Applicant’s marks HOMIES and HOMIE are virtually
identical. See Calvin Klein Industries Inc. v. Calvins
Pharmaceuticals Inc., 8 USPQ2d 1269, 1271 (TTAB 1988) (“the
Serial No. 77879157
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addition of the “S” at the end of applicant’s mark
[CALVINS] does little to distinguish it from opposer’s mark
CALVIN”); In re Curtice-Burns, Inc., 231 USPQ 990, 992
(TTAB 1986) (MCKENZIE’S is virtually identical to
MCKENZIE). Accordingly, we will treat them together in our
analysis.
In comparing marks, it is a well-established principle
that there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985); see also Dixie Rest.,
105 F.3d at 1407, 41 USPQ2d 1531 (affirming TTAB finding
that DELTA was the dominant feature of the mark THE DELTA
CAFE and design, and that the design element and generic
word “CAFE” were insufficient to overcome likelihood of
confusion with the registered mark DELTA).
We find that the word “HOMIES” is the dominant portion
of the mark in the cited registration and that is entitled
to greater weight than its design elements because it is
the term “HOMIES” by which consumers will refer to
registrant’s goods. See In re Appetito Provisions Co., 3
USPQ2d 1553, 1554 (TTAB 1987). See also CBS Inc. v.
Serial No. 77879157
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Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)
(“in a composite mark comprising a design and words, the
verbal portion of the mark is the one most likely to
indicate the origin of the goods to which it is affixed”);
Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 395-96 (Fed. Cir. 1983).
Moreover, because applicant’s mark is displayed in
standard character form, it is not limited to any special
stylization and we must assume that it could be displayed
in a stylization similar to thatadopted by registrant. In
re RSI Systems LLC, 88 USPQ2d 1445, 1448 (TTAB 2008).
In view of the foregoing, we find that when the marks
are compared in their entireties, they are similar in terms
appearance, sound, meaning and commercial impression.
B. The similarity or dissimilarity and nature of the
goods.

In comparing the similarity of the goods, we are
mindful that the greater the degree of similarity between
the applicant’s mark and the cited registered mark, the
lesser the degree of similarity between the applicant’s
goods and registrant’s goods that is required to support a
finding of likelihood of confusion. In re Opus One, Inc.,
60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
Serial No. 77879157
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1983). Even when goods are not intrinsically related, the
use of identical marks can lead to the assumption that
there is a common source. In re Shell Oil Co., 992 F.2d
1024, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
The mark in the cited registration is for “t-shirts
and hats” and applicant is seeking to register its marks
for “athletic bags and back packs.” The Examining Attorney
submitted six use-based, third-party registrations for
products listed in both the application and registration at
issue. Third-party registrations which individually cover
a number of different goods that are based on use in
commerce may have some probative value to the extent that
they serve to suggest that the listed goods are of a type
which may emanate from the same source. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993);
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6
(TTAB 1988).
Applicant argues that all of the third-party
registrations cover a substantial number of different
products that are not particularly relevant.2 However, only
one of the registrations arguably falls within that
category.

2 Applicant’s Brief, pp. 4-5.
Serial No. 77879157
8
Applicant also argues that two of the third-party
registrations are not probative because they include
“retail store services” and that the mere fact those
different products can be found in a retail store is not a
sufficient basis for finding that the goods are related.3
We agree with applicant that the one registration
whose description of goods includes a wide variety of
different products and includes retail store services is of
limited probative value because it appears to be a house
mark covering a wide variety of products. However, the
other third-party registration that includes retail store
services is probative because the retail store services are
focused on clothing and accessories.
While the examining attorney’s evidence regarding the
similarity of the goods is unimpressive, it is well settled
that applicant’s goods and the registrant’s goods do not
have to be identical or directly competitive to support a
finding that there is a likelihood of confusion. It is
sufficient if the respective products are related in some
manner and/or that the conditions surrounding their
marketing are such that they would be encountered by the
same persons under circumstances that could, because of the
similarity of the marks used in connection therewith, give

3 Applicant’s Brief, pp. 4-5.
Serial No. 77879157
9
rise to the mistaken belief that they emanate from or are
associated with a single source. In re Albert Trostel &
Sons Co., 29 USPQ2d at 1785; In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
We find that the examining attorney has presented
sufficient evidence to establish a prima facie case that
the goods are related. Applicant did not present any
evidence regarding the relationship of the goods and its
arguments that the goods are not related were not
persuasive.
C. Balancing the factors.
The du Pont factors require to us to consider the
thirteen factors for which evidence has been made of record
in likelihood of confusion cases. In view of the facts
that the marks are similar and the goods are related, we
find that applicant’s marks HOMIES and HOMIE for “athletic
bags and backpacks” are likely to cause confusion with the
mark HOMIES and design for “clothing, namely, t-shirts and
hats.”
Decision: The refusal to register is affirmed.