We Make Things GmbH

Trademark Trial and Appeal Board

Oct 31, 2012

No. 79068594 (T.T.A.B. Oct. 31, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: October 31, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re We Make Things GmbH
________

Serial No. 79068594
_______

We Make Things GmbH, pro se.

Myriah A. Habeeb, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Cataldo and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, We Make Things GmbH, filed an application
to register on the Principal Register the mark shown below
for
Clothing, namely, belts, coats, jackets,
overalls, pants, socks, pullovers, shifts,
skirts, undergarments, stockings, suits, sweat
absorbent underclothes, sweaters, tights,
trousers, vests; waterproof clothing, namely,
water proof jackets, water proof coats and
waterproof pants, gloves; headgear for wear,
namely, hats, caps; footwear; jerseys being
clothing; hoods being clothing; combinations
being clothing; parkas, pelerines; sandals;
collar protectors; fittings of metal for shoes
and boots, namely, protective metal members for
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shoes and boots; soles for footwear; tips for
footwear; boots; headbands being clothing; boots
for sports; beach shoes; stockings; knitwear
being clothing, namely, knit shirts, knit
jackets; singlets; underwear; all aforementioned
products destined for bikers

in International Class 25.1 Applicant provided the
following translation of the wording in its mark: “The
English translation of ‘ÉCLAT’ in the mark is ‘sparkle.’”

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with applicant’s
goods, so resembles the mark displayed below, previously
registered on the Principal Register, for
Clothing, namely suits, jackets, sweaters,
shirts, blouses, skirts, pants, singlets,
raincoats, overcoats, overalls, T-shirts, jeans,

1 Application Serial No. 79068594 was filed December 16, 2008,
seeking an extension of protection of applicant’s International
Registration No. 1002182, issued on December 16, 2008. “The mark
consists of a stylized arrowhead comprised of two stylized
opposing letters “E” above the stylized term “éclat.” “Color is
not claimed as a feature of the mark.” The application recites
additional goods in International Classes 6 and 12 that are not
subject to the instant refusal to register.

Ser. No. 79068594
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swimsuits, robes, underwear, belts, gloves,
socks, ties, and wraps

in International Class 25,2 as to be likely to cause
confusion.

Registrant provided the following translation of the
wording in its mark: “The term ‘ECLAT’ is French for
‘sparkle.’”
When the refusal was made final, applicant appealed.3

2 Registration No. 2657498 issued December 10, 2002. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.
“Color is not claimed as a feature of the mark.”
3 The examining attorney also issued a final requirement
addressing certain indefinite language in applicant’s
identification of Class 12 goods. These goods subsequently were
deleted by examiner’s amendment, along with the goods in
International Class 25, as a consequence of applicant’s
unintentional abandonment of the subject application after
issuance of the final Office action. Applicant’s notice of
appeal is limited to the application in Class 25. Further,
applicant’s petition to revive did not address the deleted goods
in International 12, but was directed solely to the Class 25
goods. As a result, the identification of Class 12 goods
presently does not include the indefinite language in question.
Ser. No. 79068594
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Applicant and the examining attorney have filed briefs
on the issue under appeal.
Likelihood of Confusion
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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (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, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Goods
Our likelihood of confusion determination is based
upon the goods as they are identified in the application
and registration at issue. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981); and In re William Hodges & Co., Inc., 190 USPQ
47, 48 (TTAB 1976). See also Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
Ser. No. 79068594
5
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”). We observe in
this case that applicant’s identification of goods
indicates that all of the clothing items listed therein are
intended for use by “bikers.” Registrant’s identification
of goods does not contain any language limiting the
intended users of its recited clothing items. As a result,
we must presume that at least some of the items in
registrant’s unrestricted identification of goods are
suitable for use by “bikers” as well as the general public.
We further observe that certain of the goods
identified in applicant’s application, i.e., “suits,”
“overalls,” “socks,” “sweaters,” “jackets,” “belts,” and
“gloves” are identical to goods identified in the cited
registration. We also find that many of the other goods
identified in the cited registration are clothing items
that are similar and related to the clothing items
identified in the involved application. Thus, we find that
the second du Pont factor weighs in favor of a finding of
likelihood of confusion.
Ser. No. 79068594
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Channels of Trade and Classes of Consumers

When identical goods or services are recited in an
application and registration with no limitations as to
their channels of trade or classes of consumers, such
channels of trade and classes of consumers must be
considered to be legally identical. See In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to
travel in the same channels of trade, and be sold to the
same class of purchasers.”). Again, although applicant’s
goods are limited to bikers, registrant’s identification
contains no restriction, and therefore at least some of the
registrant’s goods must be deemed to be sold to bikers.
We find, therefore, that registrant’s and applicant’s
legally identical goods would be marketed in the same trade
channels and to the same classes of purchasers. For this
reason, we are not persuaded by applicant’s argument that
registrant only manufactures and sells clothing to other
clothing manufacturers, who in turn sell their clothing
products to the U.S. consumer under their own brand names.
The third du Pont factor accordingly weighs in favor of a
finding of likelihood of confusion.
Ser. No. 79068594
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The Marks
We now consider the similarities and dissimilarities
between the marks. In coming to our determination, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
test 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 their entireties that
confusion as to the source of the goods offered under the
respective marks is likely to result.
In this case, with the exception of the inclusion of
the French accent aigu in applicant’s mark, we find that
the word portion of applicant’s mark is identical to the
word portion of the mark in the cited registration in
sound, and nearly identical in appearance inasmuch as they
comprise the identical term “éclat.” In terms of
connotation, we find that the connotations of the marks are
identical. To the extent that consumers would understand
the meaning of the foreign word “éclat,” this term has the
same meaning in both marks, regardless of whether the
accent mark is included. And for those consumers who are
not familiar with this word, “éclat” will appear as the
Ser. No. 79068594
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identical arbitrary term. In addition, we find that the
highly stylized arrowhead design in applicant’s mark is
insufficient to distinguish it from registrant’s mark which
consists of “eclat” and a shaded oval border. Regardless
of whether consumers will recognize the design in
applicant’s mark as an arrowhead, it remains visually less
prominent than the wording “éclat” and otherwise serves to
draw attention to the term. We further note that when a
mark comprises both a word and a design, the word is
normally accorded greater weight because it would be used
by purchasers to request the goods or services. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For
this reason, we consider the word portion, i.e., “éclat” or
“elcat” to be the dominant feature of both marks. We
further find that the marks convey the same overall
commercial impression.
In view of the foregoing, we find that, when
applicant’s mark and registrant’s mark are compared in
their entireties, they are sufficiently similar in
appearance, sound, connotation and commercial impression
that, if used in connection with identical or otherwise
related goods, confusion would be likely to occur. As
such, this du Pont factor favors a finding of likelihood of
confusion.
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Potential Consent Agreement
Finally, applicant asserts that it is seeking
registrant’s consent to registration of the subject mark,
and that it “is confident that [registrant] will sign a
Letter of Consent in the near future.”4 No such agreement
has been submitted. While an agreement by the cited
registrant consenting to applicant's registration would be
entitled to “great weight,” see, e.g., In re Four Seasons
Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071, 1072 (Fed. Cir.
1993); Bongrain Int'l (Am.) Corp. v. Delice De France,
Inc., 811 F.2d 1479, 1485, 1 USPQ2d 1775, 1778 (Fed. Cir.
1987), it does not appear on this record that applicant and
the registrant have reached any agreement.
Furthermore, to the extent that applicant’s arguments
may be construed as a request to suspend the appeal and
remand the application, we observe that the Board will
grant a request to remand an application to the examining
attorney for consideration of a consent agreement at any
time prior to the rendering of the Board’s final decision
on the appeal, if the request is accompanied by the consent
agreement. See Trademark Rule 2.142(d). See also TBMP §
1207.02 (3d ed. rev. 2012) and authorities cited therein.

4 Applicant’s brief, p. 1.

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However, in this case we do not have a consent agreement.
Although applicant may intend to seek a consent from
registrant, no such agreement has been reached and no such
agreement is of record. We also observe that applicant
never requested suspension of the appeal in order to pursue
negotiations to obtain a consent agreement, although
presumably applicant intended to approach the registrant at
the time it filed its appeal brief. Instead, applicant
allowed the Board to proceed with the appeal, including the
submission of the examining attorney’s appeal brief. We
further note that, although applicant indicated on January
17, 2012 that it would seek a consent, to date no such
consent has been received.
Conclusion
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods rendered under the applied-
for mark, that the goods originated with or are somehow
associated with or sponsored by the same entity.
Decision: The refusal of registration under Trademark
Act Section 2(d) is affirmed.