Samar S.p.A.

Trademark Trial and Appeal Board

Jul 7, 1997

EX (T.T.A.B. Jul. 7, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 7, 1997

Paper No. 14
PTH

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Samar S.p.A.
________

Serial No. 74/483,835
_______

Lawrence E. Abelman of Abelman, Frayne & Schwab for Samar
S.p.A.

Jeri J. Fickes, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______

Before Sams, Seeherman and Hairston, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Samar S.p.A. to
register the mark GREEN EARTH for underwear; brassieres;
corsets, hosiery, petticoats; nightgowns; pajamas;
pullovers; dressing gowns; bath robes; gloves; cardigans;
hats; jerseys; ties; foulards; scarves; sweaters; socks;
stockings; trousers; leggings; skirts; jackets; jerkins;
shirts; vests, jumpers; track suits; blouses; jeans; pants;
bermuda shorts; t-shirts; caps; panties; sweatshirts;
jogging suits; suits; dresses; overcoats; coats; anoraks;
Ser No. 74/483,835
2
raincoats; bathing suits; belts; shoes; boots and slippers.1
The Trademark Examining Attorney has refused
registration pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that the use of applicant's
mark for its identified goods would be likely to cause
confusion with the registered mark shown below

1Application Serial No. 74/483,835, filed January 28, 1994 under
Section 44(e) of the Trademark Act.
Ser No. 74/483,835
3
for t-shirts; sweatshirts and sweatpants; baseball caps;
polo-type shirts; tank tops; socks; light sweaters; and
wind-resistant jackets.2
When the refusal was made final, applicant appealed.
The case has been fully briefed, but no oral hearing was
requested.
Before turning to the issue of likelihood of confusion,
we must discuss an evidentiary matter. With its response to
the Examining Attorney's first Office action, applicant
submitted a search report from a private company's data base
of registered marks consisting of the words GREEN or EARTH.
The Examining Attorney made no comment about this material
in her second Office action, but in her brief, at note 5,
she states "[n]one of these registrations have been properly
made of record in a form other than a trademark search
report and therefore have not been considered." A trademark
search report from a private company's data base is
generally not the proper way to make third-party
registrations of record. See In re Hub Distributing, Inc.,
218 USPQ 284 (TTAB 1983). However, in this case, the
deficiency in making the registrations of record could have
been remedied by applicant if the Examining Attorney had so
advised applicant in the second Office action. Under the
circumstances, we must deem the Examining Attorney's silence

2Registration No. 1,875,322 issued January 24, 1995. The
stippling shown on the drawing is a feature of the mark and is
not intended to indicate color.
Ser No. 74/483,835
4
in that action to be a tacit stipulation that the search
report could be used as evidence of the listed
registrations. Accordingly, the search report will be
considered.
This brings us to the issue of likelihood of confusion.
Turning first to a consideration of the goods, at page 9 of
its brief, applicant states that it "will not challenge the
fact that the respective goods are related." Not only are
some of the respective goods related, but certain of
applicant's goods (i.e., t-shirts; sweatshirts; caps;
shirts; socks; sweaters; and jackets) are legally identical
to the goods in the cited registration. As such, the goods
are assumed to travel in the same channels of trade and to
be bought by the same classes of purchasers. We note that,
"[w]hen marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines." Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQd 1698, 1700 (Fed. Cir. 1992), cert. denied, 506 U.S.
1034 (1994).
Turning then to the respective marks, we find that as
applied to clothing, applicant's mark GREEN EARTH and the
registered mark GREEN PLANET HARMONY ON EARTH and design,
convey the identical meaning and engender the same
impression, namely, a "green Earth." In considering the
marks, we recognize that the design feature of the
registered mark, as well as the words HARMONY ON EARTH,
Ser No. 74/483,835
5
cannot be ignored. 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, 224 USPQ
749 (Fed. Cir. 1985). In the present case, we believe it
appropriate to give greater weight to the words GREEN PLANET
in the registered mark because purchasers will be more
likely to remember and call for the goods by these words.
In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987). In any event, the Earth design and the words HARMONY
ON EARTH signify that the planet referred to is the Earth,
thus reinforcing the "green Earth" connotation. In finding
that the marks are similar, we have kept in mind the normal
fallibility of human memory over time and the fact that the
average consumer retains a general rather than a specific
impresssion of trademarks encountered in the marketplace.
We conclude, therefore, that consumers familiar with
registrant's clothing sold under its mark GREEN PLANET
HARMONY ON EARTH and Earth design would be likely to
believe, upon encountering applicant's mark GREEN EARTH for
identical and related clothing, that the clothing originated
with or was somehow associated with or sponsored by the same
entity.
In reaching our decision, we have considered the third-
party registrations listed in the search report submitted by
applicant. The probative value of this evidence is very
Ser No. 74/483,835
6
limited in our determination of the specific issue of
likelihood of confusion in this case. There is no evidence
that the marks listed are in use or that purchasers are
familiar with them. Spice Islands, Inc. v. Frank Tea and
Spice Co., 505 F.2d 1293, 184 USPQ 35 (CCPA 1974); and Red
Carpet Corp. v. Johnstown American Enterprises, Inc., 7
USPQ2d 1404 (TTAB 1988). Although some of the third-party
registrations show that the words GREEN and EARTH are indeed
suggestive of environmental concerns, the marks here are so
close in meaning and impression that, when used on identical
and related clothing, the marks are likely to cause
confusion among purchasers.
Finally, to the extent that there is any doutbt on the
issue of likelihood of confusion, it is settled that such
doubt must be resolved in favor of the prior registrant and
against applicant. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1993).

Ser No. 74/483,835
7

Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.

J. D. Sams

E. J. Seeherman

P. T. Hairston,
Administrative Trademark
Judges, Trademark Trial and
Appeal and Board

Ser No. 74/483,835
8