Jen USA Inc.

Trademark Trial and Appeal Board

Aug 8, 2007

No. 76645157 (T.T.A.B. Aug. 8, 2007)

Mailed:
8 August 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jen USA Inc.
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Serial No. 76645157
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Myron Amer of Myron Amer, P.C. for Jen USA Inc.

Debra Lee, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
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Before Walters, Drost, and Kuhlke, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 18, 2005, applicant Jen USA Inc. filed an
intent to use application to register the mark CACHET (in
standard character form) on the Principal Register for
goods ultimately identified as “belt bags” in Class 18.
Serial No. 76645157.
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a prior registration for
the mark CACHET (in standard character form) for “women’s
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76645157
2
garments namely, pants, skirts, shorts, blouses, dresses,
jackets and coats” in Class 25.1
When the refusal was made final, applicant filed this
appeal.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in 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 Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
“The first DuPont factor requires examination of ‘the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.’” Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005), quoting In re E. I. du

1 Registration No. 3,039,502, issued January 10, 2006.
Ser. No. 76645157
3
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). In this case, applicant’s and registrant’s
marks are for the identical term CACHET in standard
character form. We take judicial notice of the examining
attorney’s definition of “cachet” as “superior status;
prestige.” Brief at unnumbered p. 4. This meaning would
be applicable to applicant’s and registrant’s marks.
Inasmuch as there are no differences between the marks, the
identical nature of the marks is a factor that “weighs
heavily against the applicant.” In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993).
Furthermore, “where both parties are using the identical
designation, the relationship between the goods on which
the parties use their marks need not be as great or as
close as in the situation where the marks are not identical
or strikingly similar.” Amcor, Inc. v. Amcor Industries,
Inc., 210 USPQ 70, 78 (TTAB 1981) (mark omitted). See also
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689
(Fed. Cir. 1993) (“[E]ven when goods or services are not
competitive or intrinsically related, the use of identical
marks can lead to an assumption that there is a common
source”).
Next, we consider whether the goods of the registrant
and applicant are related. Applicant’s goods are belt bags
Ser. No. 76645157
4
and registrant’s goods are pants, skirts, shorts, blouses,
dresses, jackets, and coats. In determining whether goods
are related, we must consider the goods as they are
described in the identification of goods. Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”). See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods”).
To demonstrate that belt bags are related to pants,
skirts, shorts, blouses, dresses, jackets and coats, the
examining attorney has submitted internet evidence and
copies of trademark registrations. Some of this evidence
explains what a “belt bag” is (an example follows).
Ever stared at your plumber’s utility belt and thought
“convenient, yes, but not altogether fashion-forward
enough for me”? Me, too! Thanks to Tarah Smith, I
Ser. No. 76645157
5
can cease my wonderin’ and strap on this chic,
colorful leather belt with two square pouches fit for
carryin’ all the essentials – keys, wallet, lip gloss,
you know the drill.
http://testimo.stores.yahoo.net

See also www.zappos.com (Dublino Belt Bag – “Hip and cool
belt bag made of leather” and “Adjustable belt allows you
to wear this bag on the waist or hips”) and www.amazon.com
(Maxam genuine lambskin leather belt bag”).
Other evidence shows that the same trademark is used
on both belt bags and various clothing items.
I. Gucci
Gucci Belt Bag
Adjustable web belt with magnetic closure and rear
zippered pocket
www.saksfifthavenue.com
Gucci Mini Belt Bag
www.neimanmarcus.com

Gucci
Sexy black silk top with leather sides
Gucci black wool blend trousers
Jersey top
Gucci Skirt
www.designerexposure.com

II. Prada
Prada Nylon Sport Belt Bag
www.neimanmarcus.com

Prada
Brown poly stretch suit
Powder blue stretch denim blazer
Ser. No. 76645157
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Chocolate wool tic-front jacket
www.bluelfy.com

III. Fendi
Fendi small black zip code hip belt bag
www.amazon.com

Fendi dress
Fendi shirt
www.designerexposure.com

Furthermore, the examining attorney has included
copies of registrations that show that the same entity has
registered a common mark for belt bags and various clothing
items. See, e.g., Registration Nos. 1,745,799 (Belt bags
and skirts, jackets, dresses, and blouses); 2,661,890 (Belt
bags and blouses, shorts, jackets, and skirts); 3,022,752
(Belt bags and pants, dresses, blouses, shorts, coats, and
jackets); 3,086,192 (Belt bags and coats, pants, jackets,
skirts, dresses, blouses, and shorts); 3,060,340 (belt bags
and pants, shirts, and coats); 3,060,361 (Belt bags and
blouses, dresses, skirts, trousers, shorts, and jackets);
and 2,986,568 (Belt bags and shorts, skirts, jackets,
pants, coats, and dresses). These registrations are
relevant to suggest a relationship between belt bags and
registrant’s clothing items. See In re Infinity
Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB
2001):
The registrations show that entities have registered
their marks for both television and radio broadcasting
Ser. No. 76645157
7
services. Although these registrations are not
evidence that the marks shown therein are in use or
that the public is familiar with them, they
nevertheless have probative value to the extent that
they serve to suggest that the services listed
therein, including television and radio broadcasting,
are of a kind which may emanate from a single source.
See, e.g., 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 at n. 6 (TTAB
1988).

Here, the same purchasers are likely to encounter both
belt bags and clothing items in stores that sell
registrant’s clothing and clothing accessories. While
belts bags and these clothing items are not identical, we
find that they are related.
In order to find that there is a likelihood of
confusion, it is not necessary that the goods or
services on or in connection with which the marks are
used be identical or even competitive. It is enough
if there is a relationship between them such that
persons encountering them under their respective marks
are likely to assume that they originate at the same
source or that there is some association between their
sources.

McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB
1989). See also In re Opus One Inc., 60 USPQ2d 1812, 1814-
15 (TTAB 2001).
In response to this evidence, applicant argues that
“[i]t makes no difference to the examining attorney that
[the] registration being sought is no longer of a fashion
accessory to women’s clothing but of a belt bag. To
applicant it makes a difference for the reasons set forth
Ser. No. 76645157
8
in the accompanying Evidentiary Declaration.” Brief at 2.
The declaration (p. 1) explains that “belts are
complementary to women’s clothing, but not the bags that
are in a drawer or hanging in a closet that a woman will
typically use to store her collection of belts for ready
reference.” In effect, applicant appears to be arguing
that its goods are not belt bags as discussed previously
but “bags for belts.”2 However, as we explained previously,
we must consider the goods as they are identified in the
identification of goods. The examining attorney notes that
“the term ‘belt bags’ describes a common type of fashion
bag that is worn on a belt.” Brief at unnumbered p. 8.
Clearly, applicant’s term “belt bags” includes belts that
have storage compartment(s). To the extent the term may
also include bags for belts, that does not eliminate the
likelihood of confusion because the term also includes
pocketbook-like belt bags that are related to various items

2 The examining attorney has objected to this declaration.
Trademark Rule 2.142(d) provides that the “record in the
application should be complete prior to the filing of an appeal.”
If an applicant wishes to present evidence for the examining
attorney’s consideration, it should do so in a separate, timely
request for reconsideration rather than merely attaching it to an
appeal brief. TBMP § 1204 (2d ed. rev. 2004). Here, we consider
the declaration to be merely further argument that applicant’s
counsel has in effect adopted and we will consider it as such.
Even if it were properly of record, as explained above,
applicant’s secondary definition of the term “belt bags” would
not result in the goods as set out in the identifications being
unrelated.
Ser. No. 76645157
9
of clothing.3 For example, if an applicant identified its
goods as “sport coats,” it would not be able to argue that
its “sport coats” are not related to suit coats because its
sport coats are actually “coats designed for athletes to
wear during sporting events.” The term “belt bags” clearly
includes fashion-type belt bags and our likelihood of
confusion analysis properly includes those items in our
relatedness determination.
Ultimately, we must consider the fact that the marks
are identical and the goods are related. It is likely that
a consumer, familiar with the trademark CACHET used on, for
example, pants, will likely assume that the source of belt
bags designed to be worn with pants and marketed with the
identical mark CACHET is related or associated in some way
with the source of the clothing. Therefore, we conclude
that there is a likelihood of confusion.
Decision: The examining attorney’s refusal to
register applicant’s mark CACHET for belt bags on the
ground that it is likely to cause confusion with the
identical mark used in connection with registrant’s goods
under Section 2(d) of the Trademark Act is affirmed.

3 Obviously, we have not addressed whether a more narrow
identification limited to bags for belts would be related to the
goods in the cited, or any other, registration.