Jazzman Sportswear Corporation

Trademark Trial and Appeal Board

Aug 24, 2007

No. 78429632 (T.T.A.B. Aug. 24, 2007)

Mailed:
August 24, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jazzman Sportswear Corporation
________

Serial No. 78429632
_______

John Zaccaria of Notaro & Michalos P.C. for Jazzman
Sportswear Corporation.

John M. Gartner, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______

Before Seeherman, Quinn and Hohein, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Jazzman Sportswear Corporation has appealed from the
final refusal of the Trademark Examining Attorney to
register SACRED EARTH, in standard character form, as a
trademark for the following goods:
Clothing, namely, men’s and boy’s
shirts, trousers, shorts, jackets and
tops; ladies[’] and girl’s blouses,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78429632
2
pants[,] shorts, jackets, jeans and
tops.1

Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground of
likelihood of confusion. Specifically, the Examining
Attorney has cited Registration No. 2986723 for the mark
SACRED PLANET, which includes goods and services in Classes
9, 16, 21, 25, 35 and 41. The basis for the refusal,
however, is Class 25 of the cited registration, which sets
forth the following goods:
Clothing for men, women and children,
namely, shirts, t-shirts, tops,
blouses, sweaters, turtle neck
sweaters, pants, trousers, jeans,
shorts, overalls, sweatshirts, sweat
pants, baseball caps, hats, hat visors,
gloves, mitts, scarves, suspenders,
jackets, vests, socks, shoes, boots,
slippers, sneakers, sandals, pajamas,
robes, sleep wear, underwear, boxer
shorts, swimwear.2

Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in 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.

1 Application Serial No. 78420632, filed June 3, 2004, and
asserting first use and first use in commerce as early as
December 1, 2002.
2 Issued August 23, 2005, based on a Canadian registration.
Ser No. 78429632
3
Cir. 2003). In any likelihood of confusion analysis,
however, 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).
Turning first to the goods, we note that all of
applicant’s goods are legally identical to the goods listed
in the cited registration. (Applicant’s use of the words
“boy’s” and “girl’s” in its identification is the
equivalent of the word “children’s” in the registration.)
Because the goods are legally identical, they must be
deemed to be sold in the same channels of trade and to the
same classes of consumers which, because the goods are
clothing, includes the general public.
Applicant states that is customers are “professional
buyers [who] visit applicant’s showroom and applicant’s
booth at the Magic Show [clothing trade show] and deal with
applicant on a face-to-face basis.” Brief, p. 10. In
making this statement, applicant does not take into
consideration that its clothing would then be resold under
its mark to the general public, who are the ultimate
purchasers. Applicant has also asserted that the
Ser No. 78429632
4
registrant is the producer of a movie with the title
“Sacred Planet,” and extrapolates from this that “it is
reasonably likely, therefore, that the clothing of the
cited registration likely travels in movie-related trade
channels or trade channels associated with the movie.”
Brief, p. 10. Even if applicant had submitted evidence
(and there is none) that there is a special “movie-related
trade channel” for clothing, and even if applicant’s goods
were in fact sold only to professional buyers, these
assertions can have no effect on our decision. That is
because the question of likelihood of confusion must be
based on an analysis of the mark as applied to the goods
and/or services recited in an application vis-à-vis the
goods and/or services recited in the cited registration,
rather than what the evidence shows the goods and/or
services actually to be. See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); In re William Hodges & Co., Inc.,
190 USPQ 47 (TTAB 1976).
Accordingly, the du Pont factors of the similarity of
the goods and channels of trade favor a finding of
likelihood of confusion.
Also favoring a finding of likelihood of confusion is
the du Pont factor of the conditions under which the goods
Ser No. 78429632
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are purchased. As noted above, the goods are clothing
items which must be deemed to be purchased by the public at
large. The customers, thus, must be viewed as ordinary
purchasers, without any degree of sophistication or
specialized knowledge. Further, the identified items
include many inexpensive goods, e.g., tops for children,
that may be purchased on impulse or without careful
consideration.
We turn next to the du Pont factor of the similarity
of the marks. Both applicant’s mark and the cited mark
begin with the word SACRED, followed in the respective
marks by the word EARTH or PLANET. Clearly there are
strong similarities in the marks because they both have the
identical first word. However, the similarity does not end
there. There are also similarities in connotation between
EARTH and PLANET, in that Earth is a planet. See
definition 2 for “earth,” taken from The American Heritage
Dictionary of the English Language, 3d ed., submitted by
applicant: “The third planet from the sun....”
Applicant has argued that the marks have different
connotations, with SACRED EARTH conveying the impression of
a holy place, holy ground or holy soil, or a location that
has been blessed or has spiritual or healing powers, while
SACRED PLANET “suggests something that is galactic or
Ser No. 78429632
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celestial.” Brief, p. 5. Applicant also states that,
because there are other planets in the solar system, SACRED
PLANET suggests planets other than the Earth. In addition,
applicant has pointed out, as noted previously, that the
registrant is a movie producer that has produced a
documentary movie called “Sacred Planet” which features
exotic natural places. As a result, applicant contends
that the mark SACRED PLANET “suggests an association with
the SACRED PLANET movie.” Brief, p. 7.
With respect to the latter point, we cannot assume
that the public is familiar with the registrant’s movie
SACRED PLANET, or that upon seeing SACRED PLANET for
clothing in the same stores or types of stores in which
SACRED EARTH clothing is sold, they will make a connection
between SACRED PLANET clothing and the documentary movie.
As for applicant’s argument that SACRED EARTH has the
connotation of soil rather than of the planet EARTH, we
agree that in some instances “earth” may mean “soil,” e.g.,
“a church that is believed to be built on sacred earth with
miraculous healing powers” (“Silver City Sun-News,” May 8,
2005); “a wall-enclosed cemetery where Pisans were buried
in sacred earth shipped by sea from the Holy Land”
(“Enterprise Record,” November 7, 2004). However, other
Ser No. 78429632
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NEXIS evidence submitted by applicant shows that SACRED
EARTH is also used to refer to the planet Earth:
About 30 South Sound pagans gathered
Saturday around Tivoli Fountain to
celebrate the Earth. ... said Chief
Priestess Iris Crain of Our Lady of the
Sacred Earth Temple.
“The Olympian,” August 29, 2004

“The sacred earth bids us partake of
life in a reverential way.”—Earth
Canticle
In 1997, the Dominican Earth Center was
founded on the 740-acre grounds of St.
Catharine Motherhouse in Washington
County to guide the development of an
ambitious organic-gardening and earth-
education project that may become a
model for others. Collaboration with
St. Catharine College is planned in
creating options for an Earth Literacy
curriculum and degree.
“The Courier-Journal,” May 4, 2003

[article about court case in which
three nuns were alleged to have broken
into the site of the Minuteman missile
silo near Greeley, CO and spilled
containers of their blood in the shape
of crosses]
Then, with the bloody crosses drying in
the autumn sun, the nuns sang a song
about the sacred Earth and chanted, ‘Oh
God, teach us how to be peacemakers in
a hostile world.’
“The Denver Post,” April 6, 2003

Similarly, SACRED PLANET can be viewed as a reference
to the Earth. Although applicant suggests that it can
refer to anything that is “galactic or celestial,” or a
planet other than Earth, there is no question that SACRED
Ser No. 78429632
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PLANET can have the connotation of the Earth. In fact,
registrant’s documentary film SACRED PLANET, according to
the materials that applicant has made of record,
“appreciates some of the world’s natural wonders, including
the forests of British Columbia and the glaciers of
Alaska.” “The Washington Post,” February 1, 2004. “More
than a mere travelogue, although it features stunning
photography from all over the world, this documentary has
been called ‘a stirring celebration of the planet we call
home.’” “The Orange County Register,” April 8, 2005.
“Stunning scenery spanning the globe provides the backdrop
for a standard environmental message in this 47-minute Imax
documentary.” “Plain Dealer,” April 8, 2005.
Because of the similar connotations of not only the
words EARTH and PLANET, but of SACRED EARTH and SACRED
PLANET, as well as the similarities in appearance and sound
due to the identical first word in each mark, the marks
when compared in their entireties convey similar commercial
impressions. Given the well-established principle that
when, as here, the marks are used on identical goods, “the
degree of similarity necessary to support a conclusion of
likely confusion declines,” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992), we find that the marks are similar, and
Ser No. 78429632
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that this du Pont factor favors a finding of likelihood of
confusion.
Applicant nonetheless argues that the common element
SACRED is not sufficient to support a finding of likelihood
of confusion because “SACRED” is a weak term for clothing.
Applicant bases this assertion on third-party applications,
registrations and use of SACRED marks.
We are not persuaded by this argument. Most
importantly, we have found the marks to be similar not
simply because they both contain the common element SACRED,
but because of the similarity in connotation of the words
EARTH and PLANET, and the overall similarity in connotation
and commercial impression of the marks as a whole. Second,
applicant’s reliance on third-party applications for SACRED
marks is misplaced. Third-party applications are evidence
only of the fact that the applications were filed. They
otherwise show nothing about any “weakness” of a term. As
for the third-party registrations, applicant has made of
record only six third-party registrations for SACRED marks,
as follows:3

3 In its request for reconsideration applicant also listed an
application for SOMETHING SACRED, and in its brief referred to
this mark as a registration. However, no document evidencing the
application or registration was ever submitted, and therefore we
cannot treat it as being of record. Even if applicant had
submitted a copy of the application/registration, it would not
have affected our decision herein.
Ser No. 78429632
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SACRED TEEZ for various items of
clothing, including shorts, pants,
shirts, tank tops, sweaters, jackets,
hats and pajamas;4

SACRED LOVE for clothing items
including nightgowns, lingerie, smoking
jackets, pants, shirts, dresses and tee
shirts;5

SACRED SILKS for scarves, ties,
dresses, dresses and blouses, all made
of silk;6

SACRED BLUE for clothing items
including blouses, jackets, dresses,
footwear, jeans, shirts, and shorts;7

SACRED WATER for shirts, T-shirts,
jackets and hats, as well as
concentrated water additive and printed
materials in the field of natural
health care;8 and

SACRED SEVEN for various items of
clothing.9

These third-party registrations are not evidence of use of
the subject marks in the marketplace, nor do they show that

4 Registration No. 3041661.
5 Registration No. 2960508.
6 Registration No. 2314114.
7 Registration No. 3098865. Although at the time applicant
submitted this document it was still an application, applicant
indicated in its brief that it had issued into a registration,
and the Examining Attorney has not disputed this.
8 Registration No. 3122264. Although at the time applicant
submitted this document it was still an application, applicant
indicated in its brief that it had issued into a registration,
and the Examining Attorney has not disputed this.
9 Registration No. 3196768. At the time applicant submitted
this document it was an application; however, in his brief the
Examining Attorney provided the registration number, and we have
accordingly treated such registration as being of record.

Ser No. 78429632
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the public is familiar with those marks. See Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542,
1545 (Fed. Cir. 1992); and AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA
1973) (“The existence of [third party] registrations is not
evidence of what happens in the market place or that
customers are familiar with them ...”). Moreover, while
third-party registrations may be looked at in the same
manner as a dictionary to determine a term’s significance
in a particular trade, it is not seen how the registrations
containing the word SACRED shed any light on this
significance. For example, the registration for SACRED
BLUE, especially as it relates to jeans, may be a double
entendre referencing the French exclamation “sacre bleu,”
while SACRED LOVE for such items as lingerie and nightgowns
may suggest lovemaking, but do not indicate a particular
significance to the word SACRED. Accordingly, we do not
believe that the registered mark has been shown to be weak.
In any event, even if we were to deem the protection to be
accorded the cited registered mark as being more limited
than that for an undiluted mark, the scope of protection
for the cited mark still extends to prevent the
registration of a mark which conveys the same commercial
impression and which is used for identical goods.
Ser No. 78429632
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Applicant also relies on evidence of third-party use
of SACRED marks. This evidence consists of webpages which
advertise clothing products. They include:
NATURAL NIRVANA
Sacred Threads Clothing
[listing, inter alia, “Tops & Shirts by
Sacred Threads,” “Skirts & Top Sets by
Sacred Threads,” and “Sacred Threads
Skirts”
http://store.naturalnirvana.com

Sacred Blue Clothing
[Yahoo! Shopping website,
http://shopping.yahoo.com, that lists
products and the websites for those
products, including:]
Sacred Blue Jeans—New Styles—New styles
of Sacred Blue jeans for men and women.
$10 Off your first order at
EuropeModa.com, www.europemoda.com

Sacred Cow Productions
DVDs//CDs//Books&Posters//Apparel//VHS
//Bundle
Apparel
Sacred Cow Logo Tee
[logo has a design of figures, and
words SACRED COW PRODUCTONS]
www.amplifier-store.com/sacredcow/
apparel.htm

[a website with the heading “Sacred
Shopping.com” that lists as a category
“Women’s Clothes,” as well as “Gifts
for Women,” “Gifts for Men” etc.]
www.sacredshopping.com

Applicant has also made of record some additional
webpages in which SACRED appears, but they do not show
actual third-party trademark use. Some of the references
simply describe a category of clothing, and others are
Ser No. 78429632
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miscellaneous inclusions of the word, such as the
following:
Goddess Bless
Sacred Site Undies
Go there! 100% Cotton body, nylon lace
elastic waist and leg bands. Bikini
style. Black and yellow image with
“Sacred Site” slogan and Goddess icon
in sign.
[the slogan and icon are strategically
located on the panties, and appear to
be more of an ornamental than a
trademark use]
www.wackyjac.com

[A website stating, “Hi! Sacred
Clothing is taking a little break and
working on their new site!”]
www.sacred-clothing.com

[A category called “Garments and Sacred
Clothing” on the website of The Church
of Jesus Christ of Latter-day Saints
which appears to use “sacred clothing”
as a category name for ceremonial
clothing]
www.ldscatalog.com

[A webpage with the words SACRED
CLTOHING and a design above a 2-page
story about appropriate attire for
church. It ends with the statement,
“God’s concern is with our spiritual
garment. He offers a heavenly robe
that only heaven can see….”]
http://tomslighthouse.net

[An article entitled, “Hawley studies
sacred clothing of Amish, Mormons”]
www.unt.edu

[An article by Rabbi Arthur Waskow
entitled “Sacred Clothing, Holy Body,
Naked Torah” which states that “the
Ser No. 78429632
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Torah Scroll is holiest not clothed but
naked.”
www.shalometr.org

The limited evidence of third-party trademark use is
not sufficient for us to conclude that consumers are so
used to seeing SACRED in trademarks for clothing that they
are able to distinguish such marks based on minor
differences between them. In any event, the similarity in
connotation and commercial impression between SACRED EARTH
and SACRED PLANET is much greater than that between SACRED
COW PRODUCTIONS, SACRED BLUE, SACRED THREADS and SACRED
SHOPPING.COM. Accordingly, the du Pont factor with respect
to third-party use is neutral rather than favoring
applicant.
Applicant also argues that it has been using its mark
since 2003 and there have been no instances of actual
confusion. However, we note that the cited registration is
owned by a Canadian company, and it is based on a Canadian
registration, rather than on use in the United States.
Thus, we have no evidence of the nature and extent of the
sales and advertising of the registrant’s clothing, or even
whether the registrant has sold its clothing items in the
United States at all. In view thereof, we can give little
weight to applicant’s statement that there have been no
instances of actual confusion. That is, the lack of actual
Ser No. 78429632
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confusion is a meaningful factor only where the record
demonstrates appreciable and continuous use by the applicant
and the registrant in the same markets. See, for example,
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992); and Chemetron Corp. v. Morris Coupling & Clamp
Co., 203 USPQ 537, 541 (TTAB 1979). Because there is no
evidence that there has been an opportunity for confusion to
occur, we can draw no conclusions as to the likelihood of
confusion from applicant’s assertion that it has not
experienced any incidents of actual confusion. See In re
Majestic Distilling Co., Inc., supra, 65 USPQ2d at 1205
(“The lack of evidence of actual confusion carries little
weight … especially in an ex parte context”). Accordingly,
we consider this du Pont factor to be neutral.
In view of the foregoing, we find that applicant’s use
of the mark SACRED EARTH for its identified goods is likely
to cause confusion with the mark SACRED PLANET as registered
for the goods in Class 25.
Decision: The refusal of registration is affirmed.