Oren Benmoshe

Trademark Trial and Appeal Board

Oct 11, 2000

No. 75434997 (T.T.A.B. Oct. 11, 2000)

10/11/00
Paper No. 11
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Oren Benmoshe
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Serial No. 75/434,997
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Christie Gaumer for Oren Benmoshe.
Douglas M. Lee, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Quinn, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant seeks registration of the mark “E-MALE AMERICA”
(with the word “America” disclaimed) for goods identified in
the application as “shirts, pants, jackets, shorts, sweaters
and T-shirts,” in International Class 25.1
The Trademark Examining Attorney has refused registration
under Trademark Act Section 2(d), 15 U.S.C. §1052(d), citing

1 Serial No. 75/434,997, filed February 17, 1998. The
application is based on use in commerce under Trademark Act Section
1(a), 15 U.S.C. §1051(a), with July 5, 1997 alleged as the date of
first use of the mark anywhere and September 15, 1997 alleged as the
date of first use of the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/434,997
2
Registration No. 2,097,356, which is for the mark “E-MAIL and
design” as shown below:
for goods identified as “articles of clothing, namely, T-
shirts, gloves, dresses, pull-overs, sweat shirts, sweat
pants, caps, hats, vests, anoraks, skirts, shirts, blouses,
tights, scarves, trousers, long underpants (for women), socks;
footwear and headwear, all for men and women,” also in
International Class 25,2 as a bar to registration of
applicant’s mark.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
We affirm the refusal to register.
Applicant argues that the realities of the marketplace
are that applicant sells inexpensive men’s clothing through
mass-market stores, while registrant sells extremely expensive
footwear to women solely through specialty boutiques.

2 Reg. No. 2,097,356, issued on September 16, 1997 to a French
corporation, maturing from application Ser. No. 75/149,279, filed on
August 5, 1996. The registration was filed under Sec. 44(d) with a
priority date of February 13, 1996, and ultimately issued under
Section 44(e) of the Act.
Serial No. 75/434,997
3
Applicant also maintains that the marks are visually and
phonetically quite distinct, and that the connotations of
these two marks, as applied to their respective goods, are
quite different.
The Trademark Examining Attorney contends that the
dominant term in applicant’s mark is “E-MALE,” which is
phonetically equivalent to the literal portion of registrant’s
mark. As spoken, both will create connotations of electronic
mail.
Our determination under Section 2(d) is based on an
analysis of all of the 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, 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 (CCPA 1976).
We turn first to a consideration of the goods. It is
well settled that the issue of likelihood of confusion between
applied-for and registered marks must be determined on the
basis of the goods as they are identified in the involved
application and cited registration, rather than on what any
evidence may show as to the actual nature of the goods, their
channels of trade and/or classes of purchasers. Canadian
Serial No. 75/434,997
4
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987); and In re Elbaum, 211 USPQ 639
(TTAB 1981). The goods as identified are identical in certain
respects, namely, shirts, T-shirts and pants/trousers. The
balance of the clothing items enumerated in the respective
lists of apparel must all be deemed to be closely related. In
sum, given the overlap as to some items and the substantial
similarity between the other clothing items, confusion is
likely to occur if these items were sold under the same or
similar marks. The decisions in this field have held many
different types of apparel related under Section 2(d). See
Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d
1945 (Fed. Cir. 1992) [the goods of the respective parties are
likely to be sold in department stores or specialty shops in
close proximity to each other]; and Cambridge Rubber Co. v.
Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (CCPA
1961) [women's boots related to men’s and boys’ underwear].
Turning to a consideration of the marks, we note at the
outset that if the goods are identical, “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, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
Serial No. 75/434,997
5
Further, in considering the marks, we recognize that the
geographically descriptive (and disclaimed) “AMERICA” portion
of applicant’s mark cannot be ignored. Giant Food, Inc. v.
National Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed.
Cir. 1983). However, although we have resolved likelihood of
confusion by a consideration of the marks in their entireties,
there is nothing improper in giving more weight, for rational
reasons, to a particular feature of a mark. In re National
Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir.
1985).
In this case, we have given more weight to the arbitrary
“E-MALE” portion of applicant’s mark, which is quite similar
to the entire literal portion of registrant’s mark, “E-MAIL.”
The addition of this geographically descriptive matter to one
of two otherwise similar marks will not serve to avoid a
likelihood of confusion, mistake or deception.
Applicant argues that the marks are phonetically quite
different. However, when spoken, the entire wording in
registrant’s mark (“e-mail”) is identical to the dominant
portion of applicant’s mark (“E-MALE” on the typed drawing,
“e?male” on the specimens of record). The similarity in sound
arising from the phonetic identity of “E-MAIL” and “E-MALE” is
not negated by the addition of the geographically descriptive
term, “AMERICA.” Viewed in their entireties, these two marks
Serial No. 75/434,997
6
are more similar than dissimilar because the only point of
dissimilarity results from a non-distinctive, subordinate
feature of applicant’s mark.
Registrant’s mark “E-MAIL and design” and applicant’s
mark “E-MALE AMERICA” are also similar in appearance. “E-
MALE” comprises the first part of applicant’s typed drawing
and would be the portion of the mark consumers will notice
first. Additionally, as noted above, we have rational reasons
to accord less weight to the geographically descriptive,
disclaimed term “AMERICA” in applicant’s composite mark.
Furthermore, a typed drawing permits applicant to display its
mark in a variety of styles. In this regard, we note that the
specimens of record show the word “AMERICA” in much smaller
letters, and spatially, in a subordinate position, to the
larger, much more prominent term, “e?male.” In this specimen,
applicant has also chosen a lower case presentation of
“e?male,” exactly as registrant does with “e?mail” in its
special form drawing. Finally, the slight stylization of
registrant’s composite mark does little to distinguish it from
applicant’s mark. Registrant’s “e?mail” mark is shown in
special form within an oval border, but the appearance of this
oval carrier device is certainly not unusual. Hence, such a
common shape is simply not sufficient to distinguish
applicant’s mark from registrant’s mark.
Serial No. 75/434,997
7
Finally, as to the third part of the trilogy, meaning, we
find that applicant’s mark, “E-MALE AMERICA,” and registrant’s
mark, “E?MAIL and design,” when viewed in their entireties, as
applied to these identical and/or substantially similar goods,
engender similar overall commercial impressions. Although the
words “mail” and “male” have specific and distinct meanings,
applicant’s coined term, “e-male,” like the well-known term,
“e-mail,” plays on the common suggestion of electronic
communications over the Internet.3 In this Internet age, even
taking into consideration the different spellings, E-MAIL” and
“E-MALE” will convey essentially identical connotations.
Applicant disagrees, arguing it is important in this context
that all of its listed goods are targeted to a “male” audience
(although the identification of goods is not so limited).
This does provide another logical connotation for the spelling
of the “… male” portion of applicant’s mark. However, to our
knowledge, applicant has simply coined this playful variant of
the well-known term, “e-mail.” Hence, there is no commonly
known meaning for “e-male,” and this spelling variation, when
viewed within the context of the entire mark, will not detract

3 This is easily distinguished from the facts in Gulf States
Paper Corp. v Crown Zellerback Corp., 417 F.2d 795, 163 USPQ 589
(CCPA 1969), a case cited by applicant, where “CZ” cannot be said
similarly to call to mind “E-Z.”
Serial No. 75/434,997
8
significantly from the Internet/electronic mail connotation
consumers will automatically attach to applicant’s mark.
Accordingly, we find that the similarities in sound,
appearance and overall commercial impressions simply outweigh
the differences detailed by applicant.
Additionally, in finding that the marks are likely to
cause confusion, we have kept in mind the normal fallibility
of human memory over time and the fact that ordinary consumers
who are potential purchasers of this type of apparel retain a
general rather than a specific impression of trademarks
encountered in the marketplace. In spite of applicant’s claim
that we should take notice of totally disparate marketing
channels and of the expense of registrant’s specialty goods,
in the absence of any limitations in the identifications of
goods, we must assume that some of registrant’s clothing items
as listed in its registration are fairly inexpensive and hence
are not bought by particularly sophisticated purchasers.
In examining the number and nature of similar marks in
use on similar goods, there is no evidence in the record of
similar marks in the marketplace on related goods or services.
Hence, we deem registrant’s “E-MAIL” mark to be a strong
source indicator in the apparel field.
To the extent that any of the specific differences
between the marks may cast doubt on our ultimate conclusion on
Serial No. 75/434,997
9
the issue of likelihood of confusion, we resolve that doubt,
as we must, in favor of the prior registrant. See In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 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).
We conclude that purchasers familiar with registrant’s
clothing items sold under its mark “E-MAIL and design” would
be likely to believe, upon encountering applicant’s mark “E-
MALE AMERICA” for identical and closely-related items of
apparel, that this clothing originated with or is somehow
associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.
T. J. Quinn
D. E. Bucher
C. M. Bottorff
Administrative Trademark
Judges, Trademark Trial and
Appeal Board