John Calvani

Trademark Trial and Appeal Board

Dec 2, 2004

No. 76479526 (T.T.A.B. Dec. 2, 2004)

12/2/2004
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re John Calvani
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Serial No. 76479526
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Afschineh Latifi, Esq. for John Calvani.
Monique C. Miller, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
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Before Hanak, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
John Calvani (applicant) seeks to register the design
shown below for “men’s and women’s clothing; namely,
shirts, sweaters, jackets, coats, T-shirts, baseball caps,
sweat shirts, sweat pants, pants, shorts, socks and
footwear.” The intent-to-use application was filed on
December 19, 2002. In his application, applicant referred
to the design shown below as “the design of sunglasses.”
Ser. No. 76479526
2
Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the design mark shown below,
previously registered for “clothing, namely hats, shirts,
caps, sweat shirts and sports uniforms.” Registration No.
2,715,345 issued May 13, 2003.
Ser. No. 76479526
3
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”). Considering first the
goods, we note that they are, in part, identical. The
cited registration includes shirts and sweat shirts.
Likewise, the recitation of goods in the application
includes shirts and sweat shirts.
Turning to a consideration of the marks, we note at
the outset that when the goods of the parties are in part
legally identical as is the case here, “the degree of
similarity [of the marks] 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).
Ser. No. 76479526
4
At page 1 of his brief, applicant reiterates that his
design consists of “the design of sunglasses.” Moreover,
applicant acknowledges at page 1 of his brief that the
design of the cited registration is also a “sunglass
design.” Applicant then goes on to argue at page 2 of his
brief that there are differences between his sunglass
design and the registered sunglass design. Applicant notes
that his lenses are “more square” whereas registrant’s
lenses are “more rounded.” Applicant further notes at page
2 of his brief that “the handles of the glasses are
completely different as well, with one being more rounded
[presumably applicant’s] and the other more sharp edged
[presumably registrant’s].” However, applicant also
acknowledges at page 2 of his brief that one could discern
the differences in these two sunglass designs only by means
of “a side by side comparison.”
The problem with applicant’s reasoning is that
consumers do not have the luxury of comparing marks on a
side-by-side basis. The question this Board must decide is
whether a consumer seeing one of registrant’s shirts with
registrant’s sunglass design would, at a later time upon
seeing one of applicant’s shirts with applicant’s sunglass
design, assume that the shirts emanated from a common
source.
Ser. No. 76479526
5
Applying the proper test, we find that a consumer of
shirts would not be able to remember the details of either
registrant’s or applicant’s sunglass design trademarks, and
would be of the belief that any shirt bearing a sunglass
design mark emanated from the same source as other shirts
which also had affixed to them a sunglass design.
In short, we find that if applicant were to use his
sunglass design on the identical ordinary consumer goods
for which registrant previously registered its sunglass
design, that there would be a likelihood of confusion.
Decision: The refusal to register is affirmed.