Jolie Intimates

Trademark Trial and Appeal Board

Sep 26, 2003

No. 76208434 (T.T.A.B. Sep. 26, 2003)

Mailed:
September 26, 2003
Paper No. 17
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Jolie Intimates Inc.
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Serial No. 76/208,434
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Ezra Sutton for Jolie Intimates Inc.
Sue Carruthers, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Simms, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Jolie Intimates Inc. seeks registration on the
Principal Register for the mark GYRL CO. for goods
identified as “intimate apparel, namely, bras, crop tops,
bikini underwear, panties, slips, nightgowns, cami sets,
and packaged underwear,” in International Class 25.1
This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
1 Application Serial No. 76/208,434 was filed on February 6,
2001 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. At the request of the Trademark
Examining Attorney, applicant has disclaimed the word “girl”
apart from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76/208,434
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Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has held that applicant’s mark, if it is used in
connection with the identified goods, so resembles the mark
GIRLS CO., which is registered for “women’s and girls’
clothing, namely, t-shirts, blouses, sweaters, sweat shirts
and tank tops,” also in International Class 25,2 that it
would be likely to cause confusion, to cause mistake or to
deceive.
Applicant and the Trademark Examining Attorney have
fully briefed this appeal, but applicant did not request an
oral hearing.
We affirm the refusal to register.
Applicant’s primary contention is that the term “girl”
“has been heavily diluted” (Applicant’s appeal brief, p. 2)
so that the cited registration is entitled to a most narrow
scope of protection. Applicant argues that in light of the
weakness of this term, even slight differences between the
marks may be deemed sufficient to avoid a finding that
confusion is likely.
While admitting that many clothing registrations
contain the word “girl” or “girls,” the Trademark Examining
Attorney argues that except for the cited registration,
2 Registration No. 2,435,759, issued on the Principal
Register on March 13, 2001.
Serial No. 76/208,434
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none of these other third-party marks follows it with the
designation “Co.,” as does applicant.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the du Pont factor focusing on the
relationship of the goods as described in the application
and the cited registration. As to the similarities or
dissimilarities of the respective goods of applicant and of
registrant, applicant does not spend any time trying to
rebut the showing of the Trademark Examining Attorney that
applicant’s intimate apparel is closely related to the
women’s and girls’ tops listed in the cited registration.
Clearly, likelihood of confusion has been found in cases
where the same or similar marks were used by different
parties in connection with underwear or hosiery and items
of outerwear. See Jockey International, Inc. v. Mallory &
Church Corp., 25 USPQ2d 1233 (TTAB 1992); In re Mercedes
Serial No. 76/208,434
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Slacks, Ltd., 213 USPQ 397 (TTAB 1982); In re Cook United,
Inc., 185 USPQ 444 (TTAB 1985); and Esquire Sportswear Mfg.
Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964). See also
General Shoe Corp. v. Hollywood-Maxwell Co., 277 F.2d 169,
125 USPQ 443 (CCPA 1960); and Cambridge Rubber Co. v.
Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549
(CCPA 1961). Accordingly, we find that these goods are
closely related, and would move in the same channels of
trade to the same ordinary consumers.
Turning then to the similarity or dissimilarity of the
marks in their entireties as to appearance, sound and
connotation, we find a strong similarity in the two marks.
Despite the minimal visual differences in the marks due to
the changed second letter (“y” versus “i”), the first
portion of both marks is pronounced identically. The
difference between the singular and plural forms of the
word also creates a small dissimilarity in the marks, but
not significant enough that consumers, with their fallible
memories, would be expected to remember this distinction.
Certainly we cannot assume that these consumers will be
afforded the opportunity to make a side-by-side comparison
of these two marks. Hence, as argued by the Trademark
Examining Attorney, we find that when compared in their
Serial No. 76/208,434
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entireties, these two marks create quite similar overall
commercial impressions.
Finally, we turn to the du Pont factor focusing on the
number and nature of similar marks applied to similar
goods. Throughout the prosecution of this application,
major portions of applicant’s responses and appeal brief
emphasized the number of federal trademark registrations
listing items of clothing and having a form of the word
“Girl” somewhere within the composite mark. Applicant
attached forty-seven records (the word “Girl” was the first
word in each of the marks) to its response of December 19,
2001, followed by 148 records (the word “Girl” was just
somewhere within the marks) attached to its response of
September 25, 2002. In addition to noting the sheer number
of such registrations, applicant bases its arguments for
registration herein on specific third-party registrations.
For example:
… [T]he U.S. Trademark Office has granted
registrations for “GIRLS CO.” [the cited
mark] and “G.I.R.L.” subsequent to granting
registrations [issued to the same party] for
“GIRLS INC.” and “GIRLS INCORPORATED.”
(Applicant’s appeal brief, p. 2).
Based on this entire record, we agree with applicant’s
contention that as applied to marks for girls’ clothing,
the word “Girl” (or “Girls”) alone appears to have little
Serial No. 76/208,434
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source-indicating significance. The register reflects the
fact that in the context of marks for girls’ clothing,
consumers are accustomed to looking to slight differences
in the other parts of such composite mark to distinguish
among marks having the word “Girl.”
On the other hand, we disagree with applicant’s
position when it concludes that its unusual spelling of
“gyrl” is just such a difference – i.e., one that should
entitle applicant’s chosen mark to coexist with the other
third-party marks already registered, including the cited
registration. On this question, we agree with the
Trademark Examining Attorney that this switch of the letter
“y” for the letter “i” in “girl” is insufficient to avoid a
likelihood of confusion. Even weak marks are entitled to
protection against registration by a subsequent user of the
same or similar mark for the same or related goods.3
Moreover, in the event that we have any doubt about this
matter, such doubt must be resolved in favor of the
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed. Cir. 1988).
3 We specifically note that the cited registered mark is on
the Principal Register and it is, of course, entitled to the
statutory presumptions under Section 7(b) of the Lanham Act.
Serial No. 76/208,434
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Hence, we find that consumers familiar with the
registrant’s mark GIRLS CO. used in connection with items
of women’s and girls’ clothing would mistakenly believe,
upon seeing the mark GYRL CO. for intimate apparel, that
the goods emanate from the same source.
Decision: The refusal to register under Section 2(d)
of the Act is hereby affirmed.