Manufactura de Tabacos

Trademark Trial and Appeal Board

Jun 8, 1999

No. 75102761 (T.T.A.B. Jun. 8, 1999)

Oral Hearing:
July 9, 1998
Paper No. 15
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 8, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Manufactura de Tabacos
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Serial No. 75/102,761
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Allen M. Krass and Julie A. Greenberg of Gifford, Krass,
Groh, Sprinkle, Patmore, Anderson & Citkowski for
applicant.
John Dalier, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
____________
Before Cissel, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Manufactura de Tabacos has filed a trademark
application to register the mark shown below for “cigars.”1

1 Serial No. 75/102,761, in International Class 34, filed May 13, 1996,
based on an allegation of a bona fide intention to use the mark in
commerce.
Serial No. 75/102,761
2
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the previously registered marks shown below, both
owned by Hermes International, that, if applicant’s mark
were used on or in connection with applicant’s goods, it
would be likely to cause confusion or mistake or to
deceive.
Registration No. 1,929,5292 for “smoking pipes,
cigarette holders, cigar holders, ash trays, non-
electric cigar and cigarette lighters, cigar
cases and cigar cutters all not made of precious
metal”:

2 Registration issued October 24, 1995, in International Class 34. The
registration includes a disclaimer of PARIS apart from the mark as a
whole; and includes the statement: “The mark is comprised of a horse,
carriage and trainer with circle designs while the textual portion is
comprised of the words “HERMES-PARIS” and the letter “H.”
Additionally, the registration contains a color lining statement.
Serial No. 75/102,761
3
Registration No. 1,942,2353 for “pipes, cigarette
holders, cigar holders, ash trays, non-electric
cigar and cigarette lighters not for land
vehicles, cigar cases and cigar cases not made of
precious metal, and cigar cutters”:

3 Registration issued December 19, 1995, in International Class 34. The
registration includes a disclaimer of FAUBOURG SAINT-HONORE and PARIS
apart from the mark as a whole. Additionally, the registration
contains a color lining statement.
Serial No. 75/102,761
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Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs and an oral hearing
was held. We affirm the refusal to register.
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
The Examining Attorney contends that applicant’s
goods, cigars, are closely related to registrant’s goods,
which can be described as smoking accessories, and that, in
fact, both types of goods can emanate from the same source.
In support of this proposition, the Examining Attorney
submitted several third-party registrations including both
the goods set forth in the application and the goods
specified in the cited registration.
Regarding the marks, the Examining Attorney contends
that both registrant’s marks and applicant’s mark contain
the identical term HERMES; that HERMES is the dominant
portion of each mark herein; that both applicant’s mark and
registrant’s mark in Registration No. 1,929,529 contain the
identical additional letter “H”; and, therefore, that the
overall commercial impressions of registrant’s marks and
applicant’s mark are substantially similar.
Serial No. 75/102,761
5
Regarding the goods, applicant contends that its goods
“are at most tangentially related” to those of registrant.
Regarding the marks, applicant accuses the Examining
Attorney of dissecting the marks and contends that “the
elaborate drawings are unquestionably the dominant features
of each [mark]”; that the design elements of each mark are
quite different; that, with respect to Registration No.
1,929,529, the word portion of the mark is significantly
smaller than the design portion and barely legible; and,
therefore, that the overall commercial impressions of the
marks are significantly different.
Applicant contends, further, that HERMES is a weak
element of these marks because Hermes is “a well known God
of Greek mythology [and] reference to the Greek God Hermes
is a common component in numerous trademarks.” In support
of this statement, applicant lists several third-party
registrations of marks registered for a variety of
different goods and services. However, in order to make
the registrations properly of record, soft copies of the
registrations themselves, or the electronic equivalent
thereof, i.e., printouts of the registrations taken from
the electronic records of the Patent and Trademark Office’s
(PTO) own data base, should have been submitted. See,
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
Serial No. 75/102,761
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Therefore, we have not considered this evidence. Further,
even if this evidence had been properly of record, we would
accord it little probative value in this case as the goods
and services identified in the third-party registrations
are significantly different from the goods identified in
the application and registrations in this case.
Considering, first, the goods, we find the evidence of
record sufficient to conclude that applicant’s goods are
closely related to the goods identified in the cited
registrations, and applicant has provided no evidence to
the contrary. Consequently, if the respective goods were
to be sold under the same or similar marks, confusion as to
source or sponsorship would be likely to occur.
Considering, next, the marks, the proper test for
determining the issue of likelihood of confusion is the
similarity of the general commercial impression engendered
by the marks. Due to the consuming public’s fallibility of
memory, the emphasis is on the likely recollection of the
average customer, who normally retains a general rather
than a specific impression of trademarks or service marks.
Spoons Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d. No. 92-1086 (Fed. Cir. June 5, 1992);
and In re Steury Corporation, 189 USPQ 353 (TTAB 1975).
Both applicant and the Examining Attorney recognize the
Serial No. 75/102,761
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well established principle that, in articulating reasons
for reaching a conclusion on the issue of likelihood of
confusion, while the marks are compared in their
entireties, including descriptive or disclaimed portions
thereof, “there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 732 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). If both words and a design
comprise the mark, the words are normally accorded greater
weight because the words are likely to make an impression
upon purchasers that would be remembered by them and would
be used by them to request the goods and/or services. In
re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987); and Kabushiki Kaisha Hattori Tokeiten v. Scuotto,
228 USPQ 461, 462 (TTAB 1985). See also: Giant Food, Inc.
v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983).
We agree with the Examining Attorney that the word
portion of each of the respective marks is clearly dominant
and, further, identical. HERMES would appear to be an
arbitrary term in relation to the goods identified in both
the application and the cited registrations. As also noted
Serial No. 75/102,761
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by the Examining Attorney, both applicant’s mark and
registrant’s mark in Registration No. 1,929,529 contain the
capital letter “H” within a circle. As “H” is the initial
letter in HERMES, this tends to reinforce the dominance of
the term HERMES in these two marks. Although we agree with
applicant that the design elements of each of the marks
herein are not insignificant and that the design elements
of applicant’s mark differ from the design elements of
registrant’s marks, we find these differences are
insufficient to distinguish these marks.
Therefore, we conclude that the commercial impressions
of applicant’s mark and registrant’s marks are sufficiently
similar that their contemporaneous use on the closely
related goods involved in this case would be likely to
cause confusion as to the source or sponsorship of such
goods.
Serial No. 75/102,761
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Decision: The refusal under Section 2(d) of the Act
is affirmed.
R. F. Cissel
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board