Jan T. Hornbacher

Trademark Trial and Appeal Board

Mar 24, 2008

No. 76591635 (T.T.A.B. Mar. 24, 2008)

Mailed:
March 24, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jan T. Hornbacher
________

Serial No. 76591635
(filed May 11, 2004)
_______

Robert L. Farris of Farris Law, P.C. for Jan T. Hornbacher

David H. Stine, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Seeherman, Grendel, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Jan T. Hornbacher has applied to register the mark
shown below on the Principal Register for “clothing namely,
shirts, trousers, coats and hats” in International Class
25:1

1 Application Serial Number 76591635 is based on an allegation
that applicant first used the mark in commerce on November 15,
2000.
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser. No. 76591635
2
The application contains a disclaimer of the term APPAREL
and a statement that color is not claimed as a feature of
the mark.
The examining attorney has refused to register the
mark under Section 2(d) of the Trademark Act because of a
prior registration for the mark shown below:

for “clothing, namely, blouses, shirts, t-shirts, vests,
sweaters, jumpers, skirts, dresses, pants, jackets,
blazers, suits, shorts, ties, scarves, robes, belts,
hosiery, sleepwear, rainwear, raincoats, overcoats, evening
gowns, tuxedos, waistcoats, sashes, cummerbunds, bow ties,
capes; footwear; hats and headwear” in International Class
25.2 The registration contains a statement that the mark

2 Registration No. 3064983, issued March 7, 2006 pursuant to
Section 44(e) (based on a foreign registration) and obtaining a
priority filing date of March 21, 2002. The registration also
issued under Section 2(f) (acquired distinctiveness). The
registration also covers “retail store services” in International
Class 35; however, the refusal was limited to the goods.

Ser. No. 76591635
3
“consists of a pattern of black and white stripes of
various sizes used on shopping bags, hang tags, store
signage, banners, displays and promotional materials.”
After the examining attorney made the refusal final,
this appeal followed. The record consists solely of the
application file as neither applicant nor the examining
attorney submitted evidence regarding the likelihood of
confusion refusal. As discussed further below, we affirm
the refusal.
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion 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 Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).

Ser. No. 76591635
4
Initially, we look to the level of similarity of the
goods and find them to be identical. Indeed, the cited
registration’s identification of goods encompasses all of
the specific articles of clothing identified in the subject
application, i.e., shirts, trousers (“pants” in the cited
registration), coats (“blazers, raincoats, overcoats,
waistcoats” in the registration) and hats. Applicant
attempts to argue that purchasers of his goods are
sophisticated buyers, that the goods are marketed to
different customers and move in different trade channels.
However, inasmuch as the respective goods are legally
identical and the identifications in the application and
cited registration contain no restrictions, we must presume
that the goods will be marketed and sold to the same
classes of consumers through the same channels of trade. In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart
Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958).
Therefore, we find the goods, channels of trade, and
classes of purchasers are all factors which strongly
support the refusal to register.
We now focus our inquiry on the similarities and
dissimilarities in the respective marks, when considered in
their entireties. In doing so, we are mindful that where,
as here, the goods are identical, the degree of similarity
Ser. No. 76591635
5
necessary to find likelihood of confusion need not be as
great as where there is a recognizable disparity between the
goods. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992); Real Estate One, Inc. v. Real Estate 100 Enter.
Corp., 212 USPQ 957, 959 (TTAB 1981).
As shown above, applicant’s mark consists of a barcode
design encapsulating a rectangular border containing the
wording BARCODE APPAREL.3 The design portion of the mark
may be viewed as two barcodes, or as a single barcode which
has been divided by the words. The term “apparel,” which
applicant has disclaimed, is generic and does not have any
source-indicating significance. Thus, the obvious dominant
features of applicant’s mark are the literal term BARCODE
along with the barcode design. The word BARCODE reinforces
the connotation of the design, while the design reinforces
the connotation of the word. The mark as a whole conveys
the commercial impression of a barcode.

3 In attempting to distinguish his mark from the cited mark,
applicant argues that his mark is not “a black and white design”
and that his mark is embroidered on clothing “over a background
of [various colors].” Brief, p. 4. However, as noted, the
application contains no limitation as to how applicant’s mark is
to be used and color is not claimed as a feature of applicant’s
mark. As such, we must assume he will use his mark in the same
manner shown on the application drawing page and without any
limitation as to the background color, i.e., it may appear on
white cloth or any background color, as well as on hangtags, as
the registrant indicates its mark is displayed.

Ser. No. 76591635
6
As to the registered mark, it, too, will be perceived
as a barcode design. While the mark may not be an exact
representation of an actual barcode, it is comprised of
many various width-bars with varying distances between them
and thus it gives the commercial impression that it is a
barcode. Applicant correctly points out that the bars in
the registered mark are horizontal, not vertical like
applicant’s, and that the registration does not contain a
description of the mark or otherwise indicate that it is
intended to represent a barcode. Reply Brief, p. 1.
Nonetheless, based on the widespread use of barcodes in the
world of commerce, consumers will perceive the registered
mark as a barcode, albeit a fanciful one or one placed on
its side. Nearly every product in this country contains a
barcode on it and one would be hard-pressed to find a
person who does not recognize the pattern of bars/ lines of
various widths and separations as a barcode.
In comparing applicant’s mark to the cited mark, we
find that they create the same commercial impression,
namely, that of a barcode. Visually, applicant’s mark has
the literal phrase BARCODE APPAREL which is obviously not
present in the cited mark; however, this does not
distinguish the marks and only enhances the connotation and
overall commercial impression of the barcode design.
Ser. No. 76591635
7
Likewise, the fact that applicant’s mark has two
vertically-lined barcodes versus the cited mark’s single
horizontally-lined barcode is not sufficient to distinguish
the marks. Ultimately, the same impression will be
conveyed to consumers who view the respective marks in
connection with identical clothing goods. They will be
left with the mental image of a barcode, and they are
likely to later refer to the goods as the “barcode” brand
of clothing or apparel.
In view of the above, we find that applicant’s mark is
substantially similar to that of the prior registrant, and
this factor supports the examining attorney’s refusal to
register.
There is no evidence in the record to suggest that the
cited mark is weak or that it should otherwise be accorded
a limited scope of protection. In particular, we have no
evidence of third-party use of the word BARCODE or barcode
designs as source indicators and, therefore, we must assume
that applicant and registrant are the only ones to use a
barcode design in their marks. Although barcodes
themselves are ubiquitous in the commercial word, they are
not ubiquitous as trademarks. We also point out that the
cited registered mark is entitled to all presumptions
accorded it under Section 7(b) of the Trademark Act.
Ser. No. 76591635
8
Specifically, as a registered mark, we must assume that it
is a source indicator for the identified goods.
Finally, applicant asserts that he has used his mark
since November 15, 2000 and he is unaware of any actual
confusion between his mark and the cited mark. Brief, pp.
8-9. In an ex parte case, as we have here, the absence of
actual confusion is hardly unusual and seldom is a
significant factor in finding that there is no likelihood of
confusion. In particular, we have no evidence here as to
extent of either applicant’s or the registrant’s use of the
respective marks, and therefore we cannot determine whether
there has been any significant opportunity for actual
confusion to have occurred. See Majestic Distilling, 65
USPQ2d at 1205 (“The lack of evidence of actual confusion
carries little weight”). Thus, we consider this factor to
be neutral.
After considering the relevant du Pont factors, as
discussed above, we find that applicant’s mark is likely to
cause confusion with the mark in Registration No. 3064983.
Decision: The refusal to register is affirmed.