IMT Accessories Inc.

Trademark Trial and Appeal Board

Nov 8, 2002

No. 76015534 (T.T.A.B. Nov. 8, 2002)

Mailed: November 8, 2002
Paper No. 12
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re IMT Accessories Inc.
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Serial No. 76/015,534
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Ezra Sutton, P.A. for IMT Accessories Inc.

Amos Matthews, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
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Before Hanak, Hairston and Bottorff, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

IMT Accessories Inc. has filed an application to
register the mark SIMPLY IRRESISTIBLE for “clothing,
namely, sleepwear, lingerie, pajamas, robes and footwear.”1
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that

1 Application Serial No. 76/015,534, filed March 24, 2000, based
on an asserted bona fide intent to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PREEDENT OF
THE TTAB
Ser No. 76/015,534
2
if applicant’s mark were used in connection with the
identified goods, it would so resemble the mark
IRRESISIBLES which is registered for “retail clothing store
services;”2 and “women’s apparel, namely, dresses, pants,
shorts, skirts, blouses, shirts, sweaters, coats, jackets
and outerwear, namely, scarves, mittens, gloves and hats,”3
as to be likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
Preliminarily, we must discuss an evidentiary matter.
With its appeal brief applicant has submitted printouts
taken from the United States Patent and Trademark Office
website of two third-party registrations for the marks
IRRESISTIBLE LACE and IRRESISTIBLY SHEER, IRRESISTIBLY YOU.
In addition, applicant submitted a printout from a private
company’s database of common law marks which include the
word “IRRESISTIBLE.” The Trademark Examining Attorney has
objected to these materials, stating that their submission
is untimely.
While, under Trademark Rule 2.142(d), evidence
submitted for the first time with a brief on appeal is

2 Registration No. 1,448,987 issued July 21, 1987; Section 8
affidavit accepted; Section 15 affidavit received.
3 Registration No. 2,101,696 issued September 30, 1997. The
registrations are owned by the same entity.
Ser No. 76/015,534
3
normally considered by the Board to be untimely and
therefore would usually be given no consideration, we note
that in its response to the first office action applicant
submitted a printout of the registration for the mark
IRRESISTIBLE LACE from a private party’s database and the
Examining Attorney made no objection at the time. Instead,
in the second Office action, the Examining Attorney merely
stated that while uniform treatment under Trademark Act
Section 2(d) is the Office’s goal, each case must be
decided on its own set of facts. By treating the
registration for the mark IRRESISTIBLE LACE to be of
record, the Examining Attorney has waived any objections to
its consideration. As to the remaining third-party
registration and the printouts of common law marks, in
accordance with Rule 2.142(d), we have given them no
consideration.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis under Section 2(d), two of
the most important considerations are the similarities
between the marks and the similarities between the
Ser No. 76/015,534
4
goods/services. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Considering first the goods of applicant and
registrant, applicant does not dispute that its items of
apparel and those of registrant are closely related.
Indeed, this Board has held that the marketing of different
items of wearing apparel under the same or substantially
similar marks is likely to cause confusion. See e.g., In
re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991)
[ESSENTIALS for women’s shoes is likely to cause confusion
with ESSENTIALS for women’s pants, blouses, shorts and
jackets]. See also in re Sydel Lingerie Co., Inc., 197
USPQ 629 (TTAB 1977) and cases cited therein.
Considering next applicant’s items of apparel and
registrant’s retail clothing store services, applicant
states that “consumers would not associate applicant’s mark
on clothing as emanating from or being associated [with] a
retail store.” (Brief, p. 3). The Examining Attorney,
however, argues that applicant’s items of apparel and
registrant’s retail clothing stores are related. In
support of his position, the Examining Attorney submitted
twenty use-based third-party registrations of marks which
cover clothing items, on the one hand, and retail clothing
store services, on the other hand. Although such
Ser No. 76/015,534
5
registrations are not evidence that the different marks
shown therein are in use or that the public is familiar
with them, they nevertheless have some probative value to
the extent that they serve to suggest that clothing items
and retail clothing store services are the kinds of goods
and services which may emanate from a single source. See
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 Board has
recognized that items of clothing and retail clothing store
services are related goods and services. See e.g. Andre
Oliver Inc. v. Products Exchange Company Inc., 1 USPQ2d
1817 (TTAB 1986) and In re Peebles Inc., 23 USPQ2d 1795
(1992). Under the circumstances, we find that applicant’s
items of apparel and registrant’s retail clothing stores
are sufficiently related that if offered under the same or
substantially similar marks, confusion would be likely.
Turning then to a consideration of the marks, we agree
with the Examining Attorney that SIMPLY IRRESISTIBLE and
IRRESISTIBLES are substantially similar in sound,
appearance, meaning, and thus, overall commercial
impression. In terms of sound and appearance, the
similarities are obvious because both marks include the
word IRRESISTIBLE(S).
Ser No. 76/015,534
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In terms of connotation, we find the word
IRRESISTIBLE(S) in both marks would be understood to mean
“impossible to resist” or “having an overpowering appeal.”
Further, we find the word SIMPLY in applicant’s mark would
be understood to mean “absolutely” or “altogether.” We
reach these findings based on the dictionary definitions
submitted by the Examining Attorney4 and the goods and
services involved in this case, namely items of apparel and
retail clothing store services. Thus, the marks have
virtually identical connotations in that consumers would
understand them to mean items of apparel/retail clothing
store services that are impossible or absolutely impossible
to resist.
In finding that the marks are substantially similar,
we have kept in mind the normal fallibility of human memory
over time and the fact that the average consumer retains a
general rather than a specific impression of trademarks in
the marketplace. In this regard, we note that applicant’s

4 The Examining Attorney submitted the following definitions of
the words “simply” and “irresistible” taken from The American
Heritage Dictionary of the English Language (Third Edition 1992):

simply: 4. Absolutely; altogether: simply delicious.

irresistible: 1. Impossible to resist: an
irresistible impulse to sneeze. 2. Having an
overpowering appeal. irresistible beauty.

Ser No. 76/015,534
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items of apparel and registrant’s items of apparel and
retail clothing services would be offered to the same
classes of consumers, namely the general public, who cannot
be presumed to be particularly knowledgeable or
sophisticated purchasers.
Finally, with respect to applicant’s contention that
marks containing the word IRRESISTIBLE are weak marks which
are therefore entitled to only a limited scope of
protection, as noted previously, applicant made of record a
third-party registration for the mark IRRESISTIBLE LACE for
“intimate apparel, namely, undergarments.” Also, applicant
submitted a printout from a private company’s database of
domain names, which include the word “IRRESISTIBLE.” The
existence of this third-party registration does not justify
registration of a confusingly similar mark. Third-party
registrations, by themselves, are entitled to little weight
on the question of likelihood of confusion. In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983). Such
registrations are not evidence of what happens in the
marketplace or even that the public is familiar with the
use of the marks therein. National Aeronautics and Space
Administration v. Record Chemical Co., 185 USPQ 563 (TTAB
1975). Furthermore, the printout of domain names furnished
by applicant is of limited probative value for the reason
Ser No. 76/015,534
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that there is no indication as to what, if any, goods or
services the domain names are used in connection with.
Nevertheless, and aside from the absence of any
demonstrated instances of third-party use in the clothing
field, we note that even if marks which consist of or
contain the word IRRESISTIBLE are considered to be weak,
due to an assertedly high degree of suggestiveness conveyed
by such term, even weak marks are entitled to protection
where confusion is likely. Here, notwithstanding any
alleged weakness in the term IRRESISTIBLE, the registered
mark is still substantially similar in sound, appearance,
connotation and commercial impression to applicant’s mark.
In sum, we find that consumers familiar with
registrant’s women’s apparel and retail clothing store
services offered under its mark IRRESISTIBLES would be
likely to believe, upon encountering applicant’s mark
SIMPLY IRRESISTIBLE for sleepwear, lingerie, pajamas, robes
and footwear, that the goods originated with or were
somehow associated with or sponsored by the same entity.
Decision: The refusals to register based on
Registration Nos. 1,448,987 and 2,101,696 are affirmed.