Kadena Industries Company, Ltd.Download PDFTrademark Trial and Appeal BoardMar 30, 2009No. 77192367 (T.T.A.B. Mar. 30, 2009) Copy Citation Mailed: March 30, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Kadena Industries Company, Ltd. ________ Serial No. 77192367 _______ Eric Karich, Esq. for Kadena Industries Company, Ltd. Benjamin U. Okeke, Trademark Examining Attorney, Law Office 112 (Angela B. Wilson, Managing Attorney). _______ 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 7 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. Copy with citationCopy as parenthetical citation