Miriam Jacob and Norma Sawdy

Trademark Trial and Appeal Board

Dec 17, 2004

No. 75624180 (T.T.A.B. Dec. 17, 2004)

Mailed: December 17, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Miriam Jacob and Norma Sawdy
________
Serial No. 75624180
_______
Martin R. Greenstein of Techmark for applicants.
Michael W. Baird, Trademark Examining Attorney, Law Office
116 (Meryl L. Hershkowitz, Managing Attorney).
_______
Before Quinn, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Miriam Jacob and Norma
Sawdy to register the mark US ANGELS for “children’s
clothing, namely, dresses, wedding gowns, shirts, skirts,
pants, jackets, vests, coats, sweaters, shorts and
pajamas.”1
The trademark examining attorney refused registration
on the ground that applicants’ mark, if applied to
1 Application Serial No. 75624180, filed January 20, 1999, based
on an allegation of a bona fide intention to use the mark in
commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75624180
2
applicants’ goods, would so resemble the previously
registered mark AMERICAN ANGEL for “shoes”2 as to be likely
to cause confusion under Section 2(d) of the Trademark Act.
The examining attorney also made final a requirement to
disclaim the designation “US” because, in the examining
attorney’s view, the designation is primarily
geographically descriptive.
When the refusal was made final, applicant appealed.
Applicants and the examining attorney filed briefs. An
oral hearing was not requested.
Applicants, in appealing the refusal, first assert
that the disclaimer requirement is at the crux of the
appeal, contending that the term “US” in their mark means
“We” as in “We Angels,” or “Wee” as in “Wee Angels,”
“describing the angelic nature and look of the young girls
in their fancy dresses.” (Brief, p. 3). Applicants point
to the uses of “Us” on their website which, according to
applicants, indicate “the pronoun and not the abbreviation
of ‘United States’....the letters here are not an
abbreviation, but rather a common dictionary word ‘us’
being used for its ordinary dictionary meaning, in a
fanciful, child-like, deliberately grammatically incorrect
2 Registration No. 2498522, issued October 16, 2001. The word
“American” is disclaimed apart from the mark.
Ser No. 75624180
3
manner. Nothing suggests a geographic abbreviation....”
(Brief, p. 4). Once applicants’ mark is viewed as “Us
Angels,” then no disclaimer is required and, applicants
further contend, there is no likelihood of confusion with
the cited mark. Even in the event that “US” is viewed as
an abbreviation for “United States,” applicants argue that
the marks US ANGELS and AMERICAN ANGEL are sufficiently
different that, when applied to different goods, confusion
would be unlikely to occur among consumers. In support of
their arguments, applicants submitted a dictionary
definition of the term “us,” copies of seven third-party
registrations of “ANGELS” marks in the clothing field, and
printouts of pages from applicants’ website.3
3 Applicants, in their response filed October 7, 2002, listed
other third-party registrations of “US” (or “U.S.”) and
“AMERICAN” formative marks that have coexisted on the register
despite the fact, according to applicants, that the registrations
covered similar goods and/or services. Inasmuch as applicants
merely listed the marks and the registration numbers therefor,
the examining attorney, in his responsive Office action, objected
to the evidence because copies of the registrations were not
furnished, citing In re Duofold, 184 USPQ 638 (TTAB 1984). The
objection is maintained in the examining attorney’s appeal brief.
(Brief, pp. 8-9). Applicants, in their reply brief, invoke
equity, citing to the Office’s computerized database and “today’s
electronic era” in which such registrations are “readily
available to all parties and the Board from their desktop at the
click of a mouse.” Accordingly, applicants argue, the third-
party registrations should be considered. The Board does not
take judicial notice of third-party registrations of marks. In
re Wada, 48 USPQ2d 1689, 1689 n. 2 (TTAB 1998), aff’d, 194 F.3d
1297, 52 USPQ2d 1539 (Fed. Cir. 1999). The proper procedure for
introducing third-party registrations is clear. See TBMP
§1208.02 (2d ed. rev. 2004). Because applicants did not properly
make these registrations of record, the examining attorney’s
Ser No. 75624180
4
The examining attorney maintains that a disclaimer of
“US” apart from applicants’ mark US ANGELS is required
because “US” is an abbreviation for “United States,” said
term being primarily geographically descriptive when
applied to applicants’ goods. In this connection, the
examining attorney points out that the original drawing of
the mark showed U.S. ANGELS, and that he allowed an amended
drawing to show the mark in its present form as US ANGELS.
Inasmuch as purchasers would perceive the “US” portion of
applicants’ mark as an abbreviation for “United States,”
the examining attorney goes on to contend that applicants’
mark and the cited mark AMERICAN ANGEL convey similar
overall commercial impressions. The examining attorney
also asserts that the goods are “articles of clothing,
target the same consumers, and travel through the same
channels of trade.” (Brief, p. 10). In support of the
refusal, the examining attorney introduced copies of
dictionary listings of “U.S.” and “American,” and copies of
excerpts of catalogs of third parties.
We first turn to the disclaimer requirement. Section
6(a) of the Trademark Act provides that the Office may
objection is sustained, and this evidence has not been considered
in making our decision. We hasten to add, however, that even if
considered, the evidence would not be persuasive of a different
result on the merits herein.
Ser No. 75624180
5
require an applicant to disclaim an unregistrable component
of a mark otherwise registrable. In the present case, the
examining attorney’s position is that “US” is a
geographically descriptive term that must be disclaimed.
In order for a term to be primarily geographically
descriptive under Section 2(e)(2), it is necessary to show
that (i) the term is the name of a place known generally to
the public, and that (ii) the public would make a
goods/place association, that is, believe that the goods
for which the term is sought to be registered originate in
that place. In re Societe Generale des Eaux Minerals de
Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
Where there is no genuine issue that the geographical
significance of a term is its primary significance and
where the geographical place is neither obscure nor remote,
a public association of the goods with the place may
ordinarily be presumed from the fact that the applicant’s
own goods come from the geographical place named in the
mark. In re Handler Fenton Westerns, Inc., 214 USPQ 848
(TTAB 1982).
It hardly needs to be said that "US" is universally
known as an abbreviation for the United States of America.
In The American Heritage Dictionary of the English Language
(3d ed. 1992), the following listing is shown for “U.S.”:
Ser No. 75624180
6
“U.S. or US abbreviation....3. United States.” We find,
therefore, that the geographic significance of “US” is its
primary significance, and that, obviously, the United
States is neither obscure nor remote. United States Blind
Stitch Machine Corp. v. Union Special Machine Co., 287
F.Supp. 468, 159 USPQ 637 (S.D.N.Y. 1968); and In re U.S.
Cargo Inc., 49 USPQ2d 1702 (TTAB 1998). Further,
applicants are located in the United States and, as shown
by their website, the goods originate in this country.
Accordingly, we presume a public association of applicants’
goods with the United States.
In making the determination that “US” in applicants’
mark is geographically descriptive, we have carefully
considered the printouts of pages from applicants’ website.
The website shows a mix of uses, admittedly some of the
pronoun “us,” but others that clearly are geographic
references to the United States. For example, the top of
the website reads “Us Angels” with a description of
applicants and their products under the heading “About us.”
But the remaining uses identify applicants’ trade name as
“U.S. Angels Inc.” or “US Angels” (as in “US Angels Special
Occasion Dresses” and “US Angels Bridal Collection”). The
following paragraph, describing applicants’ origins, is
revealing on this point:
Ser No. 75624180
7
Little Angels Born In The USA initially
began as a small dynamic company
specializing in flower girl dresses.
Our success with elegant dresses at
affordable prices soon lead us to our
expansion as “US Angels”. We now have
positioned ourselves in both the
children’s wear and bridal gown market
as premium manufacturers of fine
special occasion dresses.
We find that “US,” as it appears in applicants’ mark,
will be perceived as primarily geographically descriptive;
this finding is buttressed by applicants’ own uses, not to
mention the original drawing that depicted the mark as U.S.
ANGELS. In view thereof, a disclaimer of the primarily
geographically descriptive designation “US” is warranted.
The disclaimer requirement is affirmed.
Turning next to the issue of likelihood of confusion,
our determination of this issue is based on an analysis of
all of the probative facts in evidence that are relevant to
the factors set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also:
In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also: In
Ser No. 75624180
8
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Although the “AMERICAN” and “US” portions are
different in sound and appearance, the marks AMERICAN ANGEL
and US ANGELS as a whole are similarly constructed, that
is, both begin with a geographical reference to the United
States followed by the virtually identical terms “ANGEL”
and “ANGELS.” Moreover, the marks are virtually identical
in meaning.
As discussed above in connection with the disclaimer
requirement, we find it likely that consumers will view the
“US” portion of applicants’ mark as an abbreviation for
“United States” as opposed to the pronoun “us.” In
addition to the universally understood meaning of the
abbreviation “US,” the likelihood of this perception is
increased due to the grammatically incorrect nature of the
phrase “us angels” (as a play on “we angels” or “wee
angels”). The examining attorney submitted a dictionary
listing of the term “American” showing it defined, in
relevant part, as “of or relating to the United States of
America or its people, language, or culture.” The American
Heritage Dictionary of the English Language (3d ed. 1992).
The similarity in connotation of the marks AMERICAN ANGEL
and US ANGELS outweighs the differences in sound and
Ser No. 75624180
9
appearance. In sum, the marks AMERICAN ANGEL and US
ANGELS, when considered in their entireties, engender
similar overall commercial impressions.
Insofar as the goods are concerned, it is not
necessary that the respective goods be similar or
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective goods are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
We acknowledge that there is no per se rule governing
likelihood of confusion in cases involving clothing items.
In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). At
the same time, we note that likelihood of confusion has
been found in prior cases where it was determined that
goods of the same kind as or analogous to those involved
herein are related for the purpose of deciding likelihood
of confusion issues. See Cambridge Rubber Co. v. Cluett,
Ser No. 75624180
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Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (CCPA 1961)
[WINTER CARNIVAL for women’s boots and men’s and boy’s
underwear]; General Shoe Co. v. Hollywood-Maxwell Co., 277
F.2d 169, 125 USPQ 443 (CCPA 1960) [INGENUE for shoes and
INGENUE for brassieres]; Avon Shoe Co. v. David Crystal,
Inc., 279 F.2d 607, 125 USPQ 607 (2d Cir. 1960) [HAYMAKERS
for women's shoes and HAYMAKER for women's sportswear,
including blouses, shirts, and dresses]; In re Keller,
Heumann & Thompson Co., 81 F.2d 399, 28 USPQ 221 (CCPA
1936) [TIMELY for men's shoes and TIMELY for men's suits,
topcoats and overcoats]; Villager, Inc. v. Dial Shoe Co.,
256 F.Supp. 694, 150 USPQ 528 (E.D.Pa. 1966) [THE VILLAGER
and JUNIOR VILLAGER for young women's wearing apparel,
including inter alia, dresses, skirts, blouses, slacks,
jackets, and MISS VILLAGER for shoes]; In re Pix of
America, Inc., 225 USPQ 691 (TTAB 1985) [NEWPORTS for
women’s shoes and NEWPORT for outer shirts]; and United
States Shoes Corp. v. Oxford Industries, Inc., 165 USPQ 86
(TTAB 1970) [COBBIES BY COS COB for women's and girl's
shirt-shifts and COBBIES for shoes].
As the Board stated in In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991):
In this case we have women's shoes, on
the one hand, and women's pants,
blouses, shorts and jackets, on the
Ser No. 75624180
11
other. Despite applicants’ argument to
the contrary, we believe that these
goods are related. A woman's ensemble,
which may consist of a coordinated set
of pants, a blouse and a jacket, is
incomplete without a pair of shoes that
match or contrast therewith. Such
goods are frequently purchased in a
single shopping expedition. When
shopping for shoes, a purchaser is
usually looking for a shoe style or
color to wear with a particular outfit.
The items sold by applicant and
registrant are considered to be
complementary goods. They may be found
in the same stores, albeit in different
departments.
Notwithstanding the specific differences between shoes
and clothing items, we find them to be sufficiently related
for the same reasons quoted above, that, when sold under
similar marks, purchasers are likely to be confused. As
shown by the catalog evidence submitted by the examining
attorney, shoes and clothing are sold in the same channels
of trade to the same classes of purchasers. These
purchasers would include ordinary consumers who, due to the
normal fallibility of human memory over time, retain a
general rather than a specific impression of trademarks
encountered in the marketplace.
The third-party registrations of marks, all of which
include “ANGELS” as a part thereof, do not compel a
different result. This evidence does not establish that
the registered marks are in use or that the public is
Ser No. 75624180
12
familiar with them. AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973); and Lilly
Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ
406 (CCPA 1967). Further, all of the cited marks (HEAVEN’S
ANGELS, ASPHALT ANGELS, ELVES ANGELS, EARTH ANGELS, SLEEPY
ANGELS, TIRED ANGELS, and ANGELS SO SWEET) are different
from the ones involved herein in that none include a
geographical designation for this country. In short, none
of the marks is as close to registrant’s mark as is
applicants’ mark.
We conclude that consumers familiar with registrant’s
shoes sold under its mark AMERICAN ANGEL would be likely to
believe, upon encountering applicants’ mark US ANGELS for
children’s clothing items, that the goods originated with
or are somehow associated with or sponsored by the same
entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., supra; and
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984).
Ser No. 75624180
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Decision: The requirement for a disclaimer of “US”
apart from the mark is affirmed. The refusal to register
under Section 2(d) is affirmed.
If applicants intend to appeal the affirmance of the
Section 2(d) refusal, and they are willing to disclaim “US”
apart from the mark, then applicants may file the
disclaimer within thirty days of the date of this decision.
Trademark Rule 2.142(g). In the event that the disclaimer
is filed, the refusal of registration based on the
disclaimer requirement will be set aside. Applicants
should note that the filing of the disclaimer would not
extend the time to file an appeal of this decision. The
time for filing an appeal of this decision runs from the
mailing date hereof.