MTTM Worldwide, LLC

Trademark Trial and Appeal Board

Apr 26, 2010

No. 77622669 (T.T.A.B. Apr. 26, 2010)

Mailed: 4/26/10

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MTTM Worldwide, LLC
________

Serial Nos. 77602546; 77603454; and 77622669
_______

Peter J. Vranum of Gordon, Herlands, Randolph & Cox for
MTTM Worldwide, LLC.

Russ Herman, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Hairston and Grendel, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

MTTM Worldwide, LLC filed intent-to-use applications
to register the mark MOB NYC (“NYC” disclaimed) (in
standard characters) for “jackets, pants [and] shirts” (in
International Class 25);1 and “all purpose carrying bags,
back packs, duffel bags, gym bags, handbags, key cases,
purses, sling bags, sport bags, tote bags, umbrellas [and]
wallets” (in International Class 18).2 MTTM Worldwide, LLC

1 Application Serial No. 77602546, filed October 28, 2008.
2 Application Serial No. 77622669, filed November 26, 2008.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser. Nos. 77602546; 77603454; and 77622669
2
also filed an intent-to-use application to register the
mark MOB GIRL (“GIRL” disclaimed) (in standard characters)
for “jackets, pants [and] shirts” (in International Class
25).3 In each application, applicant claimed ownership of
Registration No. 3287374, issued September 4, 2007, of the
mark MARRIED TO THE MOB for “clothing for women, namely
tee-shirts, sweatshirts, tank-tops and bathing suits” (in
International Class 25).
The trademark examining attorney refused registration
in each application under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), on the ground that applicant’s
marks, when applied to applicant’s goods, so resembles the
previously registered mark MOB INC. (“INC.” disclaimed) (in
typed form) for “men’s and women’s clothing, namely
consisting of--shirts, pants, jackets, baseball hats,
beanies, tank tops, jerseys, socks, sweaters, sweatshirts,
[and] underwear” (in International Class 25),4 as to be
likely to cause confusion.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs.

3 Application Serial No. 77603454, filed October 29, 2008.
4 Registration No. 2775484, issued October 21, 2003; Section 8
affidavit filed and accepted.
Ser. Nos. 77602546; 77603454; and 77622669
3
The appeals involve common issues of law and fact, and
the records are very similar.5 Accordingly, the Board will
decide the appeals in this single opinion.
Before turning to the specifics of each appeal, we
will set forth general legal principles relating to the
issue of likelihood of confusion that apply equally to all
three appeals.
Our determination of the issue of likelihood of
confusion 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

5 In each of the appeals, the examining attorney submitted
additional evidence with his appeal brief. The evidence
comprises copies of third-party registrations to show the less
than distinctive nature of the terms “NYC” and “GIRL” as they
appear in marks for clothing and handbags. In its reply brief,
applicant neither objected to or discussed the new evidence.
Nevertheless, the submission of the additional evidence with the
appeal brief is manifestly untimely. Trademark Rule 2.142(d).
Accordingly, this evidence has not been considered.
Ser. Nos. 77602546; 77603454; and 77622669
4
As to the marks, we must compare the marks in their
entireties as to appearance, sound, connotation and
commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the
first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods and/or services offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
With respect to the second du Pont factor regarding
the similarity between the goods, it is not necessary that
the respective goods be competitive, or even that they move
in the same channels of trade to support a holding of
likelihood of confusion. The issue is not whether
consumers would confuse the goods themselves, but rather
whether they would be confused as to the source of the
goods. It is sufficient that the respective goods are
Ser. Nos. 77602546; 77603454; and 77622669
5
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
originated from the same producer. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991). In considering this du Pont
factor, 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).
We now turn to address each of the appeals.

Application Serial Nos. 77602546 and 77622669:
MOB NYC
We first turn to a comparison of the goods. As
indicated earlier, applicant is seeking to register its
mark MOB INC. for “jackets, pants [and] shirts” (in
International Class 25), and “all purpose carrying bags,
back packs, duffel bags, gym bags, handbags, key cases,
purses, sling bags, sport bags, tote bags, umbrellas [and]
wallets” (in International Class 18). Registrant’s
identification of goods reads “men’s and women’s clothing,
namely consisting of--shirts, pants, jackets, baseball
Ser. Nos. 77602546; 77603454; and 77622669
6
hats, beanies, tank tops, jerseys, socks, sweaters,
sweatshirts, [and] underwear” (in International Class 25).
Insofar as the clothing items in Class 25 are
concerned, they are identical in part (shirts, pants and
jackets), or otherwise are closely related. Applicant does
not dispute this point.
Applicant does dispute, however, that its Class 18
goods are related to registrant’s clothing items.
Applicant argues that “[l]uggage and bags are sold in
different stores than apparel items, except perhaps in the
case of a department store, where the clothing items and
luggage would be in different departments, most likely on
different floors.” (Brief, p. 4).
In connection with this du Pont factor, the examining
attorney introduced several third-party use-based
registrations showing that the same entities have
registered a single mark for both carrying bags (e.g.,
handbags, purses, tote bags), as well as for clothing.
Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In
Ser. Nos. 77602546; 77603454; and 77622669
7
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993). Moreover, as shown by its two applications,
applicant itself intends to use the same mark for both its
clothing and bags.
We find that applicant’s variety of bags, particularly
handbags and purses, are related to registrant’s jackets,
pants and shirts for women. Women’s handbags and purses
may be chosen to complement clothing; such items might be
bought during the same shopping trip “to fashion a complete
ensemble.” Justin Industries, Inc. v. D.B. Rosenblatt,
Inc., 213 USPQ 968, 976 (TTAB 1981).
Insofar as the trade channels and classes of
purchasers are concerned, we note that there are no trade
channel limitations in either applicant’s or registrant’s
identification of goods. Accordingly, we must presume that
the goods, as identified, are marketed in all normal trade
channels for such goods and to all normal classes of
purchasers for such goods. In re Elbaum, 211 USPQ 639
(TTAB 1981). Thus, given the identity or otherwise close
relationship between the goods, we presume that the goods
move in the same or similar trade channels (e.g., clothing
stores, boutiques, department stores, and the like).
Further, given the absence of any limitation as to
purchasers, we presume that the goods are bought by the
Ser. Nos. 77602546; 77603454; and 77622669
8
same classes of consumers, including ordinary ones.
Inasmuch as the identifications do not include any
limitations as to cost, we must also presume that the goods
include relatively inexpensive items that would be subject
to impulse purchase made by ordinary consumers with nothing
more than ordinary care.
The above du Pont factors relating to the similarities
of the goods, trade channels, purchasers and conditions of
sale all weigh in favor of finding a likelihood of
confusion.
With respect to a comparison of applicant’s mark MOB
NYC and registrant’s mark MOB INC., it is well settled that
one feature of a mark may be more significant than another,
and it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (“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. Indeed, this type of analysis appears
to be unavoidable.”).
In applicant’s mark, applicant disclaimed “NYC,” while
registrant has disclaimed “INC.” apart from its mark. The
Ser. Nos. 77602546; 77603454; and 77622669
9
term “NYC” (standing for “New York City”) is either
geographically descriptive or geographically deceptively
misdescriptive; and the term “INC.” is an entity
designation having no source-indicating function. Although
we have compared the marks in their entireties, these non-
distinctive disclaimed terms play subordinate roles in each
of the marks. See In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). Clearly,
each of the marks is dominated by the identical arbitrary
term “MOB” that is the first portion of each of the marks,
and is the portion that is most likely to be remembered and
used by consumers in calling for and referring to
applicant’s and registrant’s goods. Given the commonality
of the identical, arbitrary term “MOB” in each of the
marks, we find MOB NYC and MOB INC. to be similar in sound
and appearance.
Applicant’s attempt to distinguish the marks in terms
of meaning is not persuasive. Applicant argues that the
cited mark “brings to mind a crime syndicate or a pseudo
corporate grouping of gangsters” and “also clearly brings
to mind the famous underworld crime group, ‘Murder, Inc.,’
which existed in the U.S. in the 1930s and 1940s.” (Brief,
p. 2). Applicant submitted information retrieved from on-
line publications regarding the “renown” of Murder, Inc.
Ser. Nos. 77602546; 77603454; and 77622669
10
and its prominent members Bugsy Siegel and Meyer Lansky.
On the other hand, applicant contends that its mark is an
acronym for “MOST OFFICIAL BITCHES NEW YORK CITY” and
“brings to mind the New York Mafia or perhaps the crowded
‘mob scene’ that tourist[s] see in New York.” (Brief, p.
3). In this connection, applicant submitted excerpts from
its page on “myspace.”
We agree with the examining attorney that the attempt
to connect the meanings of MOB INC. and “Murder, Inc.” is
quite a stretch, being merely conclusory with no probative
support. There simply is no basis upon which to conclude
that consumers encountering registrant’s mark will even
think of Murder, Inc., let alone somehow give MOB INC. the
specific connotation of some long-ago dissolved group
called “Murder, Inc.” Rather, we think it is likely that
consumers will attribute the commonly understood and
recognized meaning to the term “mob” in each mark, that is,
a group or gang involved in the criminal underworld of a
city. Random House Dictionary (2010). See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002) (judicial notice may be taken of dictionary
definitions).
Further, because each of the marks comprises the
common element “MOB” appearing first in both marks,
Ser. Nos. 77602546; 77603454; and 77622669
11
followed by non-distinctive matter, the marks engender
overall commercial impressions that are similar.
In view of the above, we find that the marks MOB NYC
and MOB INC., when compared in their entireties, are
similar. In making this finding, we also note that, at
least with respect to a comparison of the marks for
identical clothing items in Class 25, the degree of
similarity between the marks that is necessary to support a
finding of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). In sum, the first du
Pont factor, the similarity between the marks, weighs in
favor of a finding of a likelihood of confusion.
In an attempt to limit the scope of protection given
to the cited registration, applicant submitted third-party
registrations of various marks that include the term “MOB”
for clothing. Generally, the existence of third-party
registrations cannot justify the registration of another
mark that is so similar to a previously registered mark as
to create a likelihood of confusion, or to cause mistake,
or to deceive. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462, 463 (CCPA 1973). Nevertheless,
third-party registrations may be relevant to show that the
mark or a portion of the mark has been so commonly adopted
Ser. Nos. 77602546; 77603454; and 77622669
12
that the public will look to other elements of a mark to
distinguish the source of the goods or services. See,
e.g., AMF Inc. v. American Leisure Products, Inc., 474 F.2d
1403, 1406, 177 USPQ 268, 269-70 (CCPA 1973); and Plus
Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB
1983).
The problem with applicant’s argument is that there is
no distinctive element in either applicant’s or
registrant’s mark other than “MOB” that consumers would
look to in order to distinguish these marks. Further, each
of the third-party registered marks includes additional
matter which serves to distinguish those marks from others.
In any event, third-party registrations are not
evidence of use of the marks shown therein. AMF Inc. v.
American Leisure Products, Inc., 177 USPQ at 269. Thus,
they are not proof that consumers are familiar with such
marks so as to be accustomed to the existence of similar
marks in the marketplace, and as a result are able to
distinguish among MOB marks for clothing and related goods
based on any differences in the marks. Smith Bros. Mfg.
Co. v. Stone Mfg. Co., 177 USPQ at 463. Cf. In re Broadway
Chicken Inc., 38 USPQ2d 1559, 1565-66 (TTAB 1996)
(“Evidence of widespread third-party use, in a particular
field [restaurants], of marks containing a certain shared
Ser. Nos. 77602546; 77603454; and 77622669
13
term [BROADWAY] is competent to suggest that purchasers
have been conditioned to look to the other elements of the
marks as a means of distinguishing the source of goods or
services in the field.”).
We conclude that consumers familiar with registrant’s
jackets, pants and shirts sold under the mark MOB INC.
would be likely to mistakenly believe, upon encountering
applicant’s mark MOB NYC for jackets, pants and shirts, as
well as handbags, purses, and similar types of bags, that
these identical goods or otherwise related goods originated
with or are somehow associated with or sponsored by the
same entity. Consumers would be likely to perceive
applicant’s mark MOB NYC as identifying a brand extension
of registrant’s MOB INC. product line originating in New
York City, or with a New York City style or look.

Application Serial No. 77603454:
MOB GIRL
Applicant is seeking to register its mark MOB GIRL for
“jackets, pants [and] shirts,” and the cited registration
of the mark MOB INC. lists registrant’s goods as “men’s and
women’s clothing, namely consisting of--shirts, pants,
jackets, baseball hats, beanies, tank tops, jerseys, socks,
sweaters, sweatshirts, [and] underwear.”
Ser. Nos. 77602546; 77603454; and 77622669
14
The goods are identical as to jackets, pants and
shirts. In view of this identity, we presume, as we did
above in considering applicant’s other applications, that
the goods move in the same trade channels (e.g., clothing
stores, boutiques, department stores, and the like).
Further, given the absence of any limitation as to
purchasers, we presume that the goods are bought by the
same classes of consumers, including ordinary ones. Given
that the identifications do not include any limitations as
to cost, we must also presume that the clothing includes
relatively inexpensive items that would be subject to
impulse purchase made by ordinary consumers with nothing
more than ordinary care.
The identity in the goods, trade channels, purchasers
and conditions of sale weigh heavily in favor of a finding
of likelihood of confusion.
In considering the marks, we again note that when
marks are used in connection with identical goods, as is
the case herein, at least in part, “the degree of
similarity [between the marks] necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 23 USPQ2d at 1700.
Applicant’s mark MOB GIRL is similar to registrant’s
MOB INC. Both marks clearly are dominated by the identical
Ser. Nos. 77602546; 77603454; and 77622669
15
arbitrary term “MOB” that is the first portion of each
mark. The generic/highly descriptive word “GIRL” is
disclaimed and does little in the mark other than to inform
consumers that the clothing is for girls. The abbreviation
“INC.” in registrant’s mark is an entity designation having
no source-indicating capability.
The marks are similar in sound and appearance. As to
meaning, applicant contends that its mark is an “acronym”
for “MOST OFFICIAL BITCHES GIRL,” and for those not
familiar with applicant’s clothing, “brings to mind a young
female who consorts with members of a criminal group,
perhaps a mobster’s girlfriend.” (Brief, p. 3). Although
the marks may have specific differences in meaning, both
convey a connection with an underworld group. Given that
the marks are for identical clothing items, we find that
MOB INC. and MOB GIRL engender similar overall commercial
impressions.
The similarities between the marks weigh in favor of a
finding of a likelihood of confusion.
As it did in the other applications discussed above,
applicant introduced third-party registrations of marks
that include “MOB” as a portion thereof. For the reasons
expressed earlier, this evidence does not persuade us to
reverse the refusal.
Ser. Nos. 77602546; 77603454; and 77622669
16
We conclude that consumers familiar with registrant’s
jackets, pants and shirts sold under the mark MOB INC.
would be likely to mistakenly believe, upon encountering
applicant’s mark MOB GIRL for jackets, pants and shirts,
that these identical goods originated with or are somehow
associated with or sponsored by the same entity. Consumers
would be likely to perceive applicant’s mark MOB GIRL as
identifying an extension of registrant’s MOB INC. clothing
line that is designed for girls.

Conclusion
In each of the appeals, we conclude that the record
establishes that confusion between applicant’s and
registrant’s marks for their respective goods is likely to
occur in the marketplace.
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., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusals to register are affirmed.