Justin Botos and Matthew J. Botos

Trademark Trial and Appeal Board

Sep 18, 2008

No. 78922977 (T.T.A.B. Sep. 18, 2008)

Mailed:
18 September 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Justin Botos and Matthew J. Botos
________

Serial No. 78922977
_______

Ronald A. DiCerbo of McAndrews, Held & Malloy, Ltd. for
Justin Botos and Matthew J. Botos.

Heather Biddulph, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Rogers, Drost, and Zervas, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On July 5, 2006, Justin Botos and Matthew J. Botos
(hereinafter applicant) filed an intent-to-use application
(Serial No. 78922977) to register the mark EVIL EYE
CLOTHING (in standard character form) on the Principal
Register for the following goods and services:
All purpose sport bags; all-purpose carrying bags;
backpacks; beach bags; book bags; luggage; tote bags
in Class 18
Bathing suits; belts; blazers; bras; bustiers;
camisoles; caps; caps with visors; dresses; footwear;
jackets; jeans; knit shirts; leggings; panties; pants;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78922977
2
shirts; shorts; skirts; skull caps; socks; sweat
pants; sweat shirts; sweat suits; swim wear; T-shirts;
tank tops; teddies; trousers; undergarments;
undershirts; warm up suits in Class 25
Mail order services featuring clothing, headwear,
backpacks, carrying bags, luggage, belts, footwear,
eyeglasses, sunglasses, and accessories therefore; On-
line retail store services featuring clothing,
headwear, backpacks, carrying bags, luggage, belts,
footwear, eyeglasses, sunglasses, and accessories
therefore; Retail stores featuring clothing, headwear,
backpacks, carrying bags, luggage, belts, footwear,
eyeglasses, sunglasses, and accessories therefore in
Class 35.
Applicant has disclaimed the word “Clothing.”
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 EVIL EYES and design shown below for “Clothing,
namely, adults, teens, and children's t-shirts, shorts,
pants, hats, caps, underwear, jackets, dress shirts and
bandanas” in class 25.1

When the refusal was made final, applicant filed a
request for reconsideration and this appeal.

1 Registration No. 3080307 issued April 11, 2006.
Ser. No. 78922977
3
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 [or services]
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 du Pont, 177
USPQ at 567). In this case, registrant’s mark includes the
wording EVIL EYES and the design of a pair of eyes.
Applicant’s mark consists of the words EVIL EYE CLOTHING.
Inasmuch as applicant’s mark is in standard character form,
Ser. No. 78922977
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we must assume that the displays of the wording in
applicant’s and registrant’s marks are identical.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847 (Fed. Cir. 2000) (“Registrations with typed
drawings are not limited to any particular rendition of the
mark and, in particular, are not limited to the mark as it
is used in commerce”). The differences in the marks are:
applicant’s use of the singular and registrant’s use of the
plural of the word “eye,” the presence of the disclaimed
term “clothing” in applicant’s mark, and the presence of
the design of a pair of eyes in registrant’s mark. We do
not find these differences to be significant. A “[s]ide by
side comparison is not the test.” Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573,
574 (CCPA 1973).
Applicant argues that:
The use of the singular as opposed to the plural is
significant in this matter. Applicant’s mark is
singular; indicating a single eye. As set forth
below, Applicant’s use of the singular emphasizes
Applicant’s distinctive connotation of the “evil eye.”
Registrant’s mark is plural; indicating two eyes.
Registrant’s design consisting of two eyes emphasizes
the connotation of two “evil eyes.” Consumers saying
and/or seeing each of the marks would perceive the
dissimilarities in the marks. [By] using the singular
phrase, Applicant’s mark creates a different visual
and auditory impression than that of the cited mark.

Brief at 4.

Ser. No. 78922977
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It is not apparent that many consumers would remember
the difference between the singular and plural of the word
“eye” or rely on that difference to distinguish the marks.
Wilson v. Delauney, 245 F.2d 877, 114 USPQ 339, 341 (CCPA
1957) (“It is evident that there is no material difference,
in a trademark sense, between the singular and plural forms
of the word "Zombie" and they will therefore be regarded
here as the same mark”). Even if they did, the difference
between the singular and plural would not necessarily have
the different meanings applicant maintains. For example,
applicant submitted a Wikipedia article with a request for
reconsideration. The article points out that the “evil eye
is a folk belief.” The same article uses the plural when
it describes (emphasis added) how “lemons are crushed by
the vehicle and another new lemon is hung with chillies
[sic] in a bead to ward off any future evil eyes.” Other
websites sell single “eye” charms but use the plural “eyes”
for these charms. See www.religiousmall.com (“small gifts:
Blue Evil Eyes”) and www.tulumba.com (“Evil Eye Charms – In
many parts of the world, Evil Eyes are believed to carry
magical powers”).2

2 We point out that the sites do not appear to be foreign
websites, as applicant suggests. Indeed, the tulumba.com site
refers to “Upcoming Community Events” in various U.S. cities.
Ser. No. 78922977
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We have also considered the presence of the disclaimed
term “clothing” in applicant’s mark. The term “clothing”
is a generic term for applicant’s numerous clothing items
in class 25. Disclaimed matter is often “less significant
in creating the mark’s commercial impression.” In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). In re
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944,
1946 (Fed. Cir. 2004) (“With respect to ALE, the Board
noted that the term is generic and that the registrant
disclaimed it in its registration. Because ALE has nominal
commercial significance, the Board properly accorded the
term less weight in assessing the similarity of the marks
under DuPont. As a generic term, ALE simply delineates a
class of goods”). Applicant’s term simply informs
consumers of the fact that clothing items are some of the
items on which applicant uses the mark or services with
which applicant’s services are associated.
The only other difference is the presence of the
“eyes” design. Both marks include the words “evil eye(s).”
To many people, especially those without knowledge of folk
lore, the design of a pair of eyes would simply reinforce
the “evil eye” words in both marks, rather than distinguish
the marks. See In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (Federal
Ser. No. 78922977
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Circuit held that, despite the addition of the words “The”
and “Cafe” and a diamond-shaped design to registrant's
DELTA mark, there still was a likelihood of confusion) and
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer
design likely to be confused with CONCEPT for hair care
products).
Applicant also argues that the “words EYE and EVIL are
dilute[d].” Reply Br. at 3. To support this argument,
applicant includes a list of registrations in the request
for reconsideration. “The Board does not take judicial
notice of third-party registrations, and the mere listing
of them is insufficient to make them of record.” In re
Carolina Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB 1998).
See also In re Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974)
(“[T]he submission of a list of registrations is
insufficient to make them of record”). The examining
attorney advised applicant that to “make registrations
proper evidence of record, soft copies of the registrations
or the complete electronic equivalent … must be submitted.”
Denial of Request for Reconsideration at 1. In the appeal
brief and reply brief, applicant has now attached copies of
these registrations without submitting these registrations
in a second request for reconsideration or a request for
Ser. No. 78922977
8
remand. The examining attorney has objected to these
registrations on the ground that this evidence “was never
properly made of record.” Brief at 1. We agree with the
examining attorney. This evidence was not timely made of
record as the case law above sets out and we will not rely
on this evidence. Therefore, we cannot conclude that,
based on the evidence properly of record, the registered
mark is entitled to only a narrow scope of protection. We
add that the fact that “evil” and “eye” may be registered
separately in other registrations hardly supports
applicant’s conclusion that the term at issue here, “EVIL
EYE(S),” is weak or diluted. The examining attorney
maintains that the term “evil eye” or “evil eyes,” when
“used in connection with goods in classes 18, 25 and 35, is
undiluted on the Register appearing only in the prior
registrant’s mark and the applicant’s mark.” Denial of
Request for Reconsideration at 1.
When we compare the marks in their entireties, we find
that the marks EVIL EYE CLOTHING and EVIL EYES and eye
design are dominated by the common term EVIL EYE(S) and
they are very similar in sound and appearance. Also, their
meanings and commercial impression are similar, if not
overlapping.
Ser. No. 78922977
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Next, we consider whether the goods of the registrant
and applicant are related. Registrant’s goods are t-
shirts, shorts, pants, hats, caps, underwear, jackets,
dress shirts and bandanas. Applicant’s goods are:
clothing items; mail order and retail services featuring,
inter alia, clothing; and various bags, including sports,
carrying, book, tote, and beach bags, as well as luggage.
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”).
We begin by noting that some of applicant’s clothing
items are identical to registrant’s clothing items (T-
Ser. No. 78922977
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shirts, shorts, pants, caps, and jackets). Other items
(dress shirts/shirts and hats/caps) are legally identical.
“When marks would appear on virtually identical goods or
services, 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, 1701 (Fed. Cir. 1992). Therefore, we find
that these goods in class 25 are identical or related to
registrant’s goods.
Next, we look at applicant’s services in Class 35.
Here, the services specifically include “mail order
services featuring clothing… online retail store services
featuring clothing … [and] retail stores featuring
clothing.” Registrant’s goods include numerous clothing
items that would be sold in mail order, online retail
store, and retail stores services featuring clothing. The
Federal Circuit has discussed the question of whether the
mark BIGGS for furniture was confusingly similar to the
mark “bigg’s” for general merchandise store services. The
Court determined that there was a relationship between
these goods and services.
The only aspect of this case which is unusual is that
the marks sought to be registered are for services
while the prior registration on which their
registration is refused is for wares. Considering the
facts (a) that trademarks for goods find their
Ser. No. 78922977
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principal use in connection with selling the goods and
(b) that the applicant's services are general
merchandising -- that is to say selling -- services,
we find this aspect of the case to be of little or no
legal significance. The respective marks will have
their only impact on the purchasing public in the same
marketplace.

In re Hyper Shoppes, 837 F.2d 1025, 6 USPQ2d 1025, 1026
(Fed. Cir. 1988). See also In re U.S. Shoe Corp., 229 USPQ
707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women's
clothing store services and clothing held likely to be
confused with CREST CAREER IMAGES (stylized) for uniforms).
Therefore, we conclude that registrant’s clothing items are
related to applicant’s mail order, online, and retail store
services featuring clothing.
We add that we do not have to determine if there is a
likelihood of confusion for every item in each class of
goods or services. Confusion is likely if there is
confusion between any item in each class of goods for which
applicant seeks registration and the cited registration.
Tuxedo Monopoly Inc. v. General Mills Fun, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981) (“[L]ikelihood of confusion
must be found if the public, being familiar with appellee’s
use of MONOPOLY for board games and seeing the mark on any
item that comes within the description of goods set forth
by appellant in its application, is likely to believe that
appellee has expanded its use of the mark, directly or
Ser. No. 78922977
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under a license, for such item”); and In re La Peregrina
Ltd., 86 USPQ2d 1645 (TTAB 2008) (“Likelihood of confusion
may be found based on any item that comes within the
identification of goods in the involved application or
registration”).
We also must consider whether applicant’s all purpose
sport bags, all-purpose carrying bags, backpacks, beach
bags, book bags, luggage, and tote bags are related to
registrant’s clothing items. The examining attorney has
submitted some evidence that suggests these items are
related. For example, the J. Crew Men’s Shop shows J. Crew
online retail services selling JCrew.com only totes as well
as messenger bags, laptop satchels, driving caps and knit
hats. These ads associate the J. Crew mark with
applicant’s and registrant’s goods and services including
the class 18 goods. Similarly, the A/X Armani Exchange
website shows the sale of various bags and caps and hats
and the DKNY website shows the sale of various clothing
items and satchels. The Banana Republic website shows
various bags also sold with items of clothing. See also
Registration No. 3170729 (beach tote bags and belts for
women and T-shirts); No. 2923375 (clothing including pants,
shorts, shirts, jackets, hats, and caps and luggage,
backpacks, tote bags, diaper bags, and travel bags); and
Ser. No. 78922977
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No. 29865568 (clothing including T-shirts, jackets, hats,
shorts, and pants and tote bags, duffel bags, beach bags,
backpacks, and knapsacks). These registrations suggest
that these goods of applicant and registrant can originate
from a common source. See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party
registrations are “not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may nonetheless have some
probative value to the extent that they may serve to
suggest that such goods or services are of a type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
We add one other point that would suggest that
applicant’s bags in class 18 are related to registrant’s
clothing. Applicant’s mark is EVIL EYE CLOTHING.
Registrant’s mark EVIL EYES and eye design is registered
for various clothing items. Applicant’s own mark EVIL EYE
CLOTHING, when it is used on bags, will suggest to
purchasers that there is some connection between the EVIL
EYE CLOTHING mark for bags and the EVIL EYES and design
mark actually used on clothing.
While applicant’s bags and registrant’s clothing items
are not identical, we find that they are related.
Ser. No. 78922977
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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). Consumers here are likely to believe that
goods with applicant’s and registrant’s marks for various
bags and clothing items originate from a common source.
Furthermore, the purchasers and channels of trade for
these goods and services are either overlapping or similar.
To the extent that the goods are identical or the goods are
clothing and the services involve selling clothing, the
purchasers are identical and the channels of trade would
overlap. Furthermore, the evidence suggests that
purchasers and channels of trade for various bags and
clothing items would be similar, if not overlapping.
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of
the parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold
to the same classes of purchasers through the same channels
Ser. No. 78922977
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of trade”). We also add that while applicant argues that
the decision to purchase applicant’s and registrant’s goods
“is typically a careful decision,” (Brief at 18), the
evidence does not support a conclusion that the purchasers
of these ordinary consumer items and services would
necessarily be careful purchasers.
We also cannot agree with applicant that the
likelihood of confusion here “is de minimis.” Brief at 18.
Quite the contrary, when marks are as similar as the marks
in this case and the goods and services are identical or
related, we find that the potential for confusion is
significant. Furthermore, applicant’s argument that
despite “concurrent use, there has been no confusion”
(Brief at 19) does not eliminate the likelihood of
confusion. We have little evidence to conclude that there
has been a significant opportunity for actual confusion to
occur between applicant’s mark filed under the intent-to-
use provision of the Trademark Act and registrant’s mark.
The Federal Circuit has explained:
With regard to the seventh DuPont factor, we agree
with the Board that Majestic's uncorroborated
statements of no known instances of actual confusion
are of little evidentiary value. See In re Bissett-
Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529
(CCPA 1973) (stating that self-serving testimony of
appellant's corporate president's unawareness of
instances of actual confusion was not conclusive that
actual confusion did not exist or that there was no
Ser. No. 78922977
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likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence
of actual confusion carries little weight, J.C. Hall
Co. v. Hallmark Cards, Inc., 52 C.C.P.A. 981, 340 F.2d
960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in
an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205. See also Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565,
218 USPQ 390, 396 (Fed. Cir. 1983); J & J Snack Foods Corp.
v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892
(Fed. Cir. 1991).
When we balance the evidence in view of the du Pont
factors, we conclude that there is a likelihood of
confusion. The marks are very similar and they would be
dominated by the common term EVIL EYE(S). The goods are in
part identical or otherwise related. When prospective
purchasers encounter the marks EVIL EYE CLOTHING and EVIL
EYES and eye design, they would assume that there would be
some relationship between the source of applicant’s goods
and services. As required, we have resolved any doubt
about the likelihood of confusion in registrant’s favor.
Hyper Shoppes, 6 USPQ2d at 1026.
Decision: The examining attorney’s refusal to
register applicant’s mark EVIL EYE CLOTHING for the
identified goods and services on the ground that it is
Ser. No. 78922977
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likely to cause confusion with the mark EVIL EYES and
design used in connection with registrant’s goods under
Section 2(d) of the Trademark Act is affirmed.