Smoke Merchandise, LLC

Trademark Trial and Appeal Board

Aug 21, 2008

No. 78706972 (T.T.A.B. Aug. 21, 2008)

Mailed:
Aug. 21, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Smoke Merchandise, LLC
________

Serial No. 78706972
Serial No. 78706973
_______

Samuel Fifer of Sonnenschein Nath & Rosenthal LLP for Smoke
Merchandise, LLC.

Angela M. Micheli, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Grendel, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Because the factual and legal issues involved in
applicant’s appeals in the two above-captioned applications
are essentially the same, we hereby consolidate the appeals
and shall decide them in this single opinion. The
applicant in both of these applications is Smoke
Merchandise, LLC.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. Nos. 78706972 and 78706973
2
In application Serial No. 78706972, applicant seeks
registration on the Principal Register of the mark SMOKE
(in standard character form) for goods identified in the
application as “denim jackets; head scarves; headwear;
jackets; jerseys; leather jackets; pants; polo shirts;
shirts; shorts; skirts; sweat shirts; t-shirts; tank tops;
underwear,” in Class 25.1
In application Serial No. 78706973, applicant seeks
registration on the Principal Register of the mark SMOKE
(in standard character form) for goods identified in the
application as “belts; jeans; loungewear; swim wear,” in
Class 25.2

1 Serial No. 78706972, filed on September 6, 2005. The
application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a). April 27, 2004 is alleged in
the application to be the date of first use of the mark anywhere
and the date of first use of the mark in commerce.

2 Serial No. 78706973, filed on September 6, 2005. The
application is based on applicant’s allegation of a bona fide
intention to use the mark in commerce. Trademark Act Section
1(b), 15 U.S.C. §1051(b).
This application also includes Class 3 goods identified as
“fragrances for personal use.” The Trademark Examining Attorney
issued a final refusal of registration as to these Class 3 goods,
in addition to the Class 25 goods. Applicant filed a notice of
appeal as to both classes. However, at page 2 of its appeal
brief, applicant stated that “Applicant hereby withdraws and
abandons its application as to Class 3.” We construe this
statement in applicant’s brief to be applicant’s express
abandonment of the application as to Class 3. See Trademark Rule
2.68, 37 C.F.R. §2.68. The application therefore is deemed to be
abandoned as to Class 3, and we shall give it no further
consideration on appeal.

Ser. Nos. 78706972 and 78706973
3
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark in each of the
applications, on the ground that the mark in each
application, as applied to the goods identified in each
application, so resembles the mark SMOKE, previously
registered (in standard character form) for “footwear” in
Class 25,3 as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d). Applicant has appealed the final refusal
in each application.
The appeals are fully briefed. After careful
consideration of the evidence of record and the arguments
of counsel, we affirm the refusal to register in each
application.
Our likelihood of confusion 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 (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic

3 Registration No. 2753582, issued to Oakley, Inc. on August 19,
2003.
Ser. Nos. 78706972 and 78706973
4
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
The first du Pont factor requires us to determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and commercial impression. Palm Bay Imports, Inc., supra.
We find that applicant’s mark SMOKE (in standard character
form) is identical to the cited registered mark SMOKE (in
standard character form) in terms of appearance, sound,
connotation and commercial impression.
We reject applicant’s suggestion that the two marks
are dissimilar in terms of appearance because applicant’s
mark, as actually used on applicant’s goods, is depicted in
stylized lettering. Applicant seeks to register the mark
in standard character form, not in any stylized lettering,
and the alleged stylization of the mark as actually used
therefore is irrelevant in this proceeding. We also reject
applicant’s argument that the marks have different
connotations and commercial impressions because SMOKE in
applicant’s mark refers to the NASCAR race driver Tony
Stewart, whose nickname is alleged to be “Smoke.” Even if
this contention were supported by evidence in the record
(it is not), it is irrelevant because the mark applicant
Ser. Nos. 78706972 and 78706973
5
seeks to register includes no reference to Mr. Stewart. We
find that SMOKE is an arbitrary term as applied to the
goods at issue here, and that it has the same connotation
and creates the same commercial impression in both marks.
Additionally, we reject applicant’s contention that SMOKE
is a weak mark. Applicant bases this contention on the
alleged existence on the Register of numerous third-party
registrations of SMOKE-formative marks, including sixty
such marks in Class 25. Applicant has not supported this
contention with printouts of these registrations, or with
any other evidence of third-party use of SMOKE marks. On
this record, and on the face of the mark itself, we find
that SMOKE is an arbitrary term as applied to the goods.
For these reasons, we find that the marks are
identical, and that the first du Pont factor accordingly
weighs in favor of a finding of likelihood of confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as identified in
the applications and in the cited registration. It is
settled that it is not necessary that the goods be
identical or even competitive in order to find that the
goods are related for purposes of our likelihood of
confusion analysis. That is, the issue is not whether
consumers would confuse the goods themselves, but rather
Ser. Nos. 78706972 and 78706973
6
whether they would be confused as to the source of the
goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). In
cases such as this where the applicant’s mark is identical
to the cited registered mark, there need be only a viable
relationship between the respective goods in order to find
that a likelihood of confusion exists. See In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re
Opus One Inc., 60 USPQ2d 1812 (TTAB 2001); and In re
Concordia International Forwarding Corp., 222 USPQ 355
(TTAB 1983).
Applying these principles in the present case, we find
as follows. The goods identified in the cited registration
are “footwear.” Applicant’s goods as identified in the
‘972 application are “denim jackets; head scarves;
headwear; jackets; jerseys; leather jackets; pants; polo
shirts; shirts; shorts; skirts; sweat shirts; t-shirts;
tank tops; underwear.” The goods identified in applicant’s
‘973 application are “belts; jeans; loungewear; swimwear.”
We find that applicant’s goods and the goods in the cited
registration are similar and related, for purposes of the
second du Pont factor.
The Trademark Examining Attorney has made of record a
printout of registrant’s website home page which shows that
registrant itself markets both footwear and apparel items.
Ser. Nos. 78706972 and 78706973
7
This evidence supports a finding that the goods are
related.
The Trademark Examining Attorney also has submitted
printouts of sixteen third-party registrations (one of
which (Reg. No. 3143623) is owned by registrant) which
include in their identifications of goods both footwear as
identified in the cited registration and other apparel
items as identified in applicant’s applications. Although
such registrations are not evidence that the marks shown
therein are in use or that the public is familiar with
them, they nonetheless have probative value to the extent
that they serve to suggest that the goods listed therein
are of a kind which may emanate from a single source under
a single mark. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988). This evidence supports a
finding that applicant’s and registrant’s goods are related
for purposes of the second du Pont factor.
Finally and as noted above, because applicant’s mark
is identical to the cited registered mark, there need be
only a viable relationship between the goods to support a
finding that the goods are related under the second du Pont
factor. In re Opus One Inc., supra. We find that such a
relationship between the goods exists in this case.
Ser. Nos. 78706972 and 78706973
8
Applicant contends that the Office in the past has
issued registrations of an identical mark to different
parties for Class 25 goods, and has submitted printouts of
three registrations of the mark IMPACT, and two
registrations of the mark BIG MAC.4 However, the clothing
items identified in these respective registrations (which
include highly specialized items such as motorcycle apparel
and volleyball kneepads) clearly are less related to each
other than are applicant’s and registrant’s goods in the
present case. Applicant also cites several cases in which
it was found that no likelihood of confusion existed as
between identical marks for clothing items.5 However, the

4 The three IMPACT registrations are Reg. No. 2267970 for
“clothing, namely dress pants, sports coats, jeans shirts and
ties”; Reg. No. 2309160 (now cancelled) for “motorcycle apparel,
namely, motorcycle gloves, motorcycle jerseys and motorcycle
tights”; and Reg. No. 2110357 (registered under Trademark Act
Section 44) for “fabric knee protectors for the sports of
volleyball and U.S. and German style handball.” The two BIG MAC
registrations are Reg. No. 1596524 for “children’s clothing,
namely, t-shirts”; and Reg. No. 0824962 for “men’s work suits,
overalls, jeans, pants, jackets, rainwear, belts, suspenders,
caps, socks, and bandanas.” In its brief, applicant also cites
to two co-existing Class 25 registrations (Reg. Nos. 2188714 and
1194385) of the mark FOCUS, but has not made them of record.
Even if they were of record, however, they again cover apparel
items which are obviously much less related to each other, i.e.,
the “men’s and young men’s clothing, namely suits, sportcoats,
sweaters, trousers, blazers, vests and reversible jackets”
identified in the ‘385 registration vs. the specialized “bicycle
clothing, namely shorts, headware, shoes, gloves, shirts,
jackets, leggings, pants and socks,” identified in the ‘714
registration.

5 These cases include In re British Bulldog, Ltd., 224 USPQ 854
(TTAB 1984); In re Shoe Works, Inc., 6 USPQ2d 1890 (TTAB 1988);
Ser. Nos. 78706972 and 78706973
9
Trademark Examining Attorney has cited has cited other
cases in which a likelihood of confusion was found as
between identical marks for clothing items.6
In any event, it is settled that we must decide each
case based on the evidence in the record before us. On
this record, and considering the fact that the marks are
identical, we find that the goods identified in applicant’s
applications are related to the goods identified in the
cited registration, under the second du Pont factor. The
second du Pont factor accordingly weighs in favor of a
finding of likelihood of confusion.
We also find under the third du Pont factor
(similarity or dissimilarity of trade channels) that
applicant’s goods as identified in the application are or
would be marketed in the same trade channels as the goods
identified in the cited registration. There are no trade
channel restrictions or limitations in either applicant’s
or registrant’s respective identifications of goods, and we
therefore must deem the respective goods to move in all
normal trade channels for such goods and to be marketed to

and H. Lubovsky, Inc. v. Esprit de Corp., 228 USPQ 814 (SDNY
1986).

6 These cases include Cambridge Rubber Co. v. Cluett, Peabody &
Co., 286 F.2d 623, 128 USPQ 549 (CCPA 1961); In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991); and In re Pix of Am., Inc.,
225 USPQ 691 (TTAB 1985).
Ser. Nos. 78706972 and 78706973
10
all normal classes of purchasers for such goods. In re
Elbaum, 211 USPQ 639 (TTAB 1981). It is irrelevant, even
if true, that applicant’s goods are marketed only via
applicant’s own website. See Octocom Systems, Inc. v.
Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1992). We find that the normal trade
channels and classes of purchasers for applicant’s apparel
items are the same as or are overlapping with the normal
trade channels and classes of purchasers for registrant’s
footwear. These would be bricks-and-mortar department and
clothing stores, as well as the retail sale of clothing
items via mail order and the Internet. As noted above,
registrant itself markets both apparel and footwear on its
website. We find that the third du Pont factor weighs in
favor of a finding of likelihood of confusion.
Finally, we find under the fourth du Pont factor
(conditions of purchase) that the conditions under which
applicant’s and registrant’s respective goods are or would
be marketed are likely to lead to confusion. The goods are
ordinary, inexpensive consumer goods which are or would be
purchased by ordinary consumers exercising only a normal
degree of care. Applicant’s contention that purchasers
would be sophisticated and knowledgable and thus readily
able to distinguish the sources of the goods is not
Ser. Nos. 78706972 and 78706973
11
supported by the record. We therefore find that the fourth
du Pont factor weighs in favor of a finding of likelihood
of confusion. It certainly does not weigh in applicant’s
favor.
After considering all of the evidence of record as it
pertains to the relevant du Pont factors, we conclude that
a likelihood of confusion exists. The marks are identical,
the goods are related, the trade channels are the same, and
the goods are ordinary consumer items purchased by ordinary
consumers. These facts suffice to establish that a
likelihood of confusion exists. We have considered all of
applicant’s arguments to the contrary (including any
arguments not specifically discussed in this opinion), but
we are not persuaded. Moreover, to the extent that any
doubts might exist as to the correctness of our conclusion
that confusion is likely, we resolve such doubts against
applicant. See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1993); 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 as to Class 25 in
Serial. Nos. 78706972 and 78706973 are affirmed. Also,
Ser. Nos. 78706972 and 78706973
12
application Serial No. 78706973 is expressly abandoned as
to Class 3.7

7 See supra at footnote 2.