Sportswear Corp. of America

Trademark Trial and Appeal Board

Jun 12, 1997

EX (T.T.A.B. Jun. 12, 1997)

THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB JUNE 12, 1997
Paper No. 14
EWH/TLW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sportswear Corporation of America
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Serial No. 74/356,328
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Myron Amer for Sportswear Corporation of America
Michael Levy, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney)
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Before Rice, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Sportswear Corporation of America (applicant) seeks
registration of MICHAEL BERNARD in typed capital letters for
"sportswear, namely, tops and bottoms." The intent-to-use
application was filed on February 8, 1993.
The Examining Attorney refused registration pursuant to
section 2(d) of the Lanham Trademark Act on the basis that
applicant's mark, as applied to tops and bottoms, is likely
to cause confusion with the mark MICHEL BERNARD, previously
Ser No. 74/356,328
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registered in typed capital letters for "watches."
Registration No. 1,890,492.
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods and the
similarities of the marks. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
("The fundamental inquiry mandated by Section 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.")
In this case, the marks are very similar. Hence, the
issue of likelihood of confusion turns primarily upon the
"differences in the essential characteristics of the goods."
The Examining Attorney contends that "the Trademark
Trial and Appeal Board has specifically held that apparel
and watches are commercially related for purposes of a
Section 2(d) analysis. See David Crystal, Inc. v. Dawson,
156 USPQ 573 (TTAB 1967)." (Examining Attorney's brief page
6). The Examining Attorney has simply misread the holding
of David Crystal. In that case, the opposer had made of
record extensive evidence showing "that jewelry and women's
wearing apparel are sold and promoted through the same
channels of trade to the same classes of purchasers, are
displayed and worn together [and] may be purchased at the
same time for coordinated wardrobes." 156 USPQ at 574
Ser No. 74/356,328
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(emphasis added). Indeed, in David Crystal the applicant
even "acknowledged that jewelry and wearing apparel have
been promoted together and that department stores and
clothing stores sell jewelry as well as clothing." 156 USPQ
at 574 (emphasis added). In David Crystal, there was no
discussion of watches, nor even a remote suggestion that
watches were somehow encompassed by the term "jewelry."
Thus, David Crystal in no way supports the Examining
Attorney's contention "that apparel and watches are
commercially related for purposes of a Section 2(d)
analysis." (Examining Attorney's brief page 6).
We find that watches are clearly distinct from apparel.
Each serves a different purpose. In addition, unlike
apparel, watches have mechanical and/or electronic
components.
Given the significant dissimilarities between
applicant's goods (sportswear, namely, tops and bottoms) and
the goods of the cited registration (watches), we find that
the use of very similar marks on such diverse goods would
not result in a likelihood of confusion unless one of the
marks was famous or a recognized designer name. In this
case, there is absolutely no evidence of record showing that
the cited mark, which according to the registration has only
been used since 1994, has achieved any fame. This is in
clear contrast to the situation in David Crystal, where the
Board, in finding likelihood of confusion resulting from the
contemporaneous use of very similar marks on jewelry and
Ser No. 74/356,328
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apparel, took specific note of the fact that opposer had
proven that its marks were "well known ... in the garment
industry." 156 USPQ at 574.
Decision: The refusal to register is reversed.
J. E. Rice
E. W. Hanak
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 74/356,328
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