Kadena Industries Company, Ltd.

Trademark Trial and Appeal Board

Mar 30, 2009

No. 77192367 (T.T.A.B. Mar. 30, 2009)

Mailed: March 30, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kadena Industries Company, Ltd.
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Serial No. 77192367
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Eric Karich, Esq. for Kadena Industries Company, Ltd.

Benjamin U. Okeke, Trademark Examining Attorney, Law Office 112
(Angela B. Wilson, Managing Attorney).
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Before Walters, Holtzman and Mermelstein, Administrative
Trademark Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Kadena Industries Company,
Ltd. (applicant) to register the mark RAINGUARD, in standard
characters, for "fabrics for the manufacture of clothing, gloves
and luggage that is waterproof and breathable" in Class 24.1
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles

1 Serial No. 77192367, filed May 29, 2007, based on an allegation of
first use and first use in commerce on October 1, 1994.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 77192367
2
the registered mark RAINGUARD (in typed form) for "rainwear" in
Class 25, as to be likely to cause confusion.2
When the refusal was made final, applicant appealed. Briefs
have been filed.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Applicant's mark RAINGUARD is identical to the mark
RAINGUARD in the cited registration. The fact that the
respective marks are identical "weighs heavily against
applicant." In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
We turn then to a consideration of the goods, keeping in
mind that where the marks are identical, as they are here, it is
only necessary that there be a viable relationship between the
goods in order to support a finding of likelihood of confusion.
See In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001); and In re

2 Registration No. 1825224; issued March 8, 1994; renewed.
Serial No. 77192367
3
Concordia International Forwarding Corp., 222 USPQ 355 (TTAB
1983).
Applicant's goods are "fabrics for the manufacture of
clothing, gloves and luggage that is waterproof and breathable,"
and registrant's goods are "rainwear." Applicant argues that the
goods are dissimilar, and also that they are sold in different
channels of trade to different purchasers, contending that
registrant's goods are sold through clothing stores to the
general consumer, whereas applicant's fabric is sold to clothing
and luggage manufacturers for the manufacture of various
waterproof products. Applicant maintains that the dissimilarity
of the goods, trade channels, purchasers, and the conditions of
purchase all weigh in favor of finding no likelihood of
confusion.
It is true that finished clothing and fabric for making
clothing are distinctly different products. However, the
question is not whether purchasers can differentiate the goods
themselves but rather whether purchasers are likely to confuse
the source of the goods. See Helene Curtis Industries Inc. v.
Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). Thus, it is not
necessary that the goods of the applicant and registrant be
similar or even competitive to support a finding of likelihood of
confusion. It is sufficient if the respective goods are related
in some manner and/or that the conditions surrounding their
Serial No. 77192367
4
marketing are such that they would be encountered by the same
persons under circumstances that could, because of the similarity
of the marks used thereon, give rise to the mistaken belief that
they emanate from or are associated with the same source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Applicant's waterproof fabrics and registrant's rainwear are
inherently related products in that waterproof fabrics would be
used in the manufacture of finished waterproof clothing,
including rainwear.3 The examining attorney has made of record
several use-based, third-party registrations for marks covering
both fabrics and items of finished clothing, including rainwear.
Third-party registrations, although not evidence of use of the
marks in commerce, serve to suggest that the respective goods are
of a type which may emanate from the same source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) and In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Furthermore, applicant's and registrant's RAINGUARD marks
may come to the attention of the same purchasers, i.e., ultimate
consumers. As an example of this, the examining attorney
submitted an advertisement from the website www.gor-tex.com
showing that Gore-Tex promotes its waterproof line of GORE-TEX

3 The examining attorney submitted an entry from The American Heritage
Dictionary of the English Language (3rd ed 1992) defining "rainwear" as
"waterproof clothing."
Serial No. 77192367
5
outerwear to ultimate purchasers as manufactured with its GORE-
TEX brand of waterproof fabric.
The fact that the goods may be sold in different channels of
trade is not significant where identical marks are used on
related goods which "may end up in the same purchaser's hands"
under conditions that might suggest a common origin. Luzier Inc.
v. Marlyn Chemical Co., Inc., 442 F.2d 973, 169 USPQ 797, 799
(CCPA 1971) ("Purchasers may not be aware of the channels through
which goods ultimately reach them."). Applicant's RAINGUARD mark
could be exposed not only to clothing manufacturers, but also to
ultimate purchasers of finished rainwear, as a mark identifying a
fabric contained in the rainwear. Because the marks are
identical, purchasers would naturally assume that registrant's
RAINGUARD rainwear and applicant's RAINGUARD waterproof fabric
come from the same source, or that there is otherwise some
connection between them.4
It has frequently been held that use of the same or similar
marks in connection with fabric, on the one hand, and finished
clothing, on the other, is likely to cause confusion. See, e.g.,
In re Apparel, Inc., 578 F.2d 308, 151 USPQ 353 (CCPA 1966),

4 We disagree that In re E.I. du Pont De Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973) supports applicant's position that likelihood
of confusion does not exist. In finding no likelihood of confusion
between the identical mark RALLY for closely related goods (auto
cleaner-polish and all purpose detergent), the Court gave great weight
to a consent agreement between applicant and the cited registrant, and
in fact the agreement played "a dominant role" in the Court's
determination. No such evidence exists or is of record in this case.
Serial No. 77192367
6
aff'g, 144 USPQ 330, 331 (TTAB 1964) ("It is well established
that piece goods and articles of apparel that can be made
therefrom are so intimately related that the marketing thereof
under the same or similar marks would be likely to cause
confusion"); E.I. du Pont de Nemours and Co. v. Sunlyra
International Inc., 35 USPQ2d 1787 (TTAB 1995) (LYRA for
children's clothing confusingly similar to LYCRA for spandex
synthetic fiber); In re Dolly, Dolly Fashions, Inc., 223 USPQ
1351 (TTAB 1984) (SPREE INTERNATIONAL for ladies sportswear
confusingly similar to SPREE for fabric piece goods); In re
Mangel Stores Corporation, 165 USPQ 22, 22 (TTAB 1970) ("there is
an obvious intimate commercial relationship between piece goods
and articles of apparel which may be made therefrom, and there
can be no question but that the sale of such goods under the
similar marks" would be likely to cause confusion). See also
Vanity Fair Mills, Inc. v. Pedigree Fabrics, Inc., 161 F.2d 226,
73 USPQ 438, 439 (CCPA 1947) ("No great array of authorities need
be cited here to the effect that it is well-settled trade mark
law that not only are fabric piece goods which are afterwards
made up into garments of the same descriptive properties as
fabric garments, but that, under most circumstances, confusion
would grow out of the concurrent use of similar trade marks on
those two kinds of merchandise.").
Serial No. 77192367
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We also point out that while the mark RAINGUARD may be
suggestive of registrant's goods, and therefore not entitled to a
broad scope of protection, the mark is at least entitled to
protection from registration of the identical mark for related
goods. See In re Colonial Stores, Inc., 216 USPQ 793 (TTAB
1992). See also King Candy Co. v. Eunice King's Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (likelihood of
confusion is to be avoided as much between weak marks as between
strong marks).
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.