Adriana Sanchez Manriquez

Trademark Trial and Appeal Board

Apr 5, 2001

No. 75377072 (T.T.A.B. Apr. 5, 2001)

04/05/01
Paper No. 12
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Adriana
Sanchez Manriquez
________
Serial No. 75/377,072
_______
John S. Egbert of Harrison & Egbert for Adriana Sanchez
Manriquez.
Mary J. Rossman, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
_______
Before Cissel, Hanak and Holtzman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On October 21, 1997, applicant, who is a citizen of
Mexico, applied to register the mark “CONCORD” on the
Principal Register for “athletic shoes and sneakers,” in
Class 25. The basis for filing the application was
applicant’s claim of use of the mark in commerce between
United States in Mexico in connection with these goods
since September of 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/377,072
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The Examining Attorney refused registration under
Section 2(d) of the Trademark Act on the ground that
applicant’s mark, “CONCORD,” as used on athletic shoes and
sneakers, so resembles the mark “CONCORD JEANS STORES,”
which is registered1, with a disclaimer of the words “JEANS
STORES,” for “retail clothing store services featuring
sportswear, footwear and men’s and women’s wearing apparel-
namely, jackets, sneakers, shirts, pants, jeans and
sweaters,” that confusion is likely.
Applicant responded with argument that confusion is
not likely “…[i]n view of the large number of registrations
and the dilution of the ’CONCORD’ mark…” In support of
this argument, applicant submitted results of a search of a
private database of trademark information. Applicant
argued that the search results demonstrate that there are
318 active and former registrations and applications for
the mark “CONCORD” or its various permutations in many
different classes, and that there are a total of thirteen
active or former applications and registrations for such
marks in Class 25 for clothing. A copy of the search
report was attached to applicant’s response.
1 Reg. No. 1,283,713, issued on the Principal Register to Concord
Jeans Corp. on June 26, 1984; subsequently assigned to A.I.J.J.
Enterprises, Inc.; combined Section 8 and 15 affidavit received
and accepted.
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The Examining Attorney was not persuaded to withdraw
the refusal to register. She advised applicant that the
search report applicant had submitted was not acceptable
evidence of the registrations listed therein, and that
because no copies of registrations or applications had been
provided, applicant’s arguments with respect to the alleged
weakness of the cited registered mark were unsupported by
any evidence.
The Examining Attorney argued that the cited
registered mark should be considered to be a strong mark
because not only has it achieved incontestable status by
virtue of the post-registration affidavit under Sections 8
in 15, but also because the register reveals that no other
“CONCORD” marks are registered in the fields of footwear,
clothing, or retail services related to such goods.
Submitted in support this position were copies of the
Examining Attorney’s search results from official Patent
and Trademark Office records in Classes 25, 35 and 42. In
support of her position that the likelihood of confusion is
not obviated by the inclusion of the word “JEANS” in the
registered mark, the Examining Attorney attached excerpts
from a search of Office records for registrations of marks
which include the word “JEANS.” This evidence establishes
that the same entities that provide retail clothing store
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services under marks which include “JEANS” also have
separately registered the same marks for use in connection
with individual items of clothing such as shoes and related
goods. Examples are “JEANS WEST,” “PEPE JEANS LONDON” and
“CK CALVIN KLEIN JEANS.” In addition, the Examining
Attorney submitted copies of excerpts from catalogues and
Office search records showing that several entities have
used and registered, or applied to register, the same or
similar marks in connection with both sports footwear and
retail clothing store services. Examples include NIKE,
REEBOK, OCEAN PACIFIC, FOOT LOCKER and THE GAP. Also
submitted with this Office Action were copies of entries
from a number of dictionaries and a thesaurus which
establish that sneakers are shoes which may be used for
sports and leisure.
The Examining Attorney reiterated her position that
confusion is likely because applicant’s mark for athletic
shoes and sneakers is similar to the registered mark for
retail store services featuring clothing and sneakers. The
refusal to register was made final in the second Office
Action.
Applicant concurrently filed a Notice of Appeal and an
appeal brief. Attached to the appeal brief was a copy of
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another search report from an automated database of
trademark information.
The Examining Attorney responded with her appeal
brief, in which she objected to our consideration of the
additional evidence attached to applicant’s appeal brief.
We sustain her objection and have not considered this
evidence. The submission of this evidence was untimely
under Trademark Rule 2.142(d). That rule requires the
record to be completed prior to the filing of a Notice of
Appeal, and although it allows the record to be
supplemented after that time under certain circumstances
when the Board approves a request to do so, applicant did
not request or receive permission to submit this evidence.
In any event, as the Examining Attorney pointed out to
applicant in her second Office Action, lists of third-party
registrations, without appropriate copies of the listed
registrations, do not make the registrations of record. In
re Duofold Inc., 184 USPQ 638 (TTAB 1974); In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983). Moreover,
even if the record included copies of the listed third-
party registrations, such registrations would not establish
the use of those registered marks, so they could not be a
basis upon which we could conclude that the consuming
public is so familiar with the use of marks containing
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“CONCORD” on clothing items that they look to other
components of such marks in order to distinguish among
them. In re Hub Distributing, Inc., supra.
Applicant did not request an oral hearing before the
Board.
The sole issue before us in this appeal is whether
applicant’s use of the mark she seeks to register on the
goods specified in the application is likely to cause
confusion with the cited registered mark.
The predecessor to our primary reviewing court listed
the principal factors to be considered in determining
whether confusion is likely in the case of In re E. I.
DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Chief among these factors are the similarity of the
marks as to appearance, sound, meaning and commercial
impression and the similarity of the goods. Any doubt as
to whether confusion is likely must be resolved in favor of
the registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988).
In the case now before us, confusion is likely because
the marks are similar and the goods set forth in the
application are closely related to the services recited in
the cited registration.
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When the marks are considered in their entireties,
applicant’s mark and the cited registered mark create
similar commercial impressions. The Examining Attorney has
pointed out many of the legal principles that lead to this
conclusion. The test for similarity between marks is not
whether the marks can be distinguished when they are
subjected to side-by-side comparison, but rather whether
they create commercial impressions which are similar.
Visual Information Institute, Inc., v. Vicon Industries
Inc., 209 USPQ 179 (TTAB 1980). We must focus on the
likely recognition of the average purchaser, who normally
retains a general, rather than specific, impression of a
trademark. Chemtron Corp. v. Morris Coupling & Clamp Co.,
203 USPQ 537 (TTAB 1979). Generally, the likelihood of
confusion is not avoided by merely deleting descriptive
wording from otherwise similar marks. In re El Torito
Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988). We must
consider the marks in their entireties. Any disclaimed
portions cannot be ignored, but one feature of a mark may
nonetheless be recognized as having more significance in
creating the commercial impression for that particular
mark. El Torito Restaurants Inc., supra. The points of
similarity between the marks have greater significance than
the points of difference. Esso Standard Oil Co. v. Sun Oil
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Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied,
351 U.S. 973, 109 USPQ 517 (1956).
When we consider the marks at issue in the instant
case in light of these principles, we conclude that these
two marks are similar enough that their use in connection
with goods and services as closely related as the goods set
forth in the application and the services recited in the
cited registration is likely to cause confusion.
Applicant’s mark is the word “CONCORD.” The
registered mark is “CONCORD JEANS STORES.” Because the
generic, and hence disclaimed term “JEANS STORES” has no
source-identifying significance, it plays a much smaller
role in creating the commercial impression of the
registered mark. The word “CONCORD” is the dominant
portion of that mark, and it is this word that applicant
seeks to register by itself. The two marks create similar
impressions because of this. “CONCORD” is the word that
prospective purchasers would be likely to remember after
encountering either of these two marks. As noted above,
there is no evidentiary support for applicant’s argument
that “CONCORD” is weak in trademark significance in
connection with footwear, clothing or retail store
services.
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When two marks are used in connection with very
closely related goods and services, the degree of
similarity necessary to support the conclusion that
confusion is likely declines. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992). The goods and services do not need to be
identical or even competitive in order to find that
confusion is likely. They need only be related in some
manner or the conditions surrounding their marketing be
such that they could be encountered by the same purchasers
under circumstances that could give rise to the mistaken
belief that the goods and services come from a common
source. In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978). It has been consistently held
that confusion is likely to result from the use of the same
or similar marks for goods, on the one hand, and for
services involving those goods, on the other. In re Hyper
Shoppes (Ohio), Inc., supra.
The record before us in this appeal establishes that
the goods set forth in the application are closely related
to the services recited in the cited registration.
Applicant’s “athletic footwear and sneakers” are
encompassed within the products registrant’s stores sell,
which are identified in the registration as “footwear,”
Ser No. 75/377,072
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“sportswear,” and “sneakers.” Additionally, the evidence
made of record by the Examining Attorney demonstrates that
third-party retailers of footwear have adopted, used and
registered their trademarks for both retail store services
and the footwear sold in their retail stores.
Applicant admits (brief, p.3) that the goods specified
in the application “overlap with the services of the prior
registered mark,” but argues that confusion is not likely
because the registrant has not registered its mark in
connection with goods in Class 25. To the extent that we
understand this argument, we are not persuaded by it.
While we agree with applicant that her goods are of the
same type sold in registrant’s retail stores, we find that
this is an entirely appropriate basis for concluding that
the use of similar marks both on the goods and in
connection with services which include selling these goods
at retail is likely to cause confusion.
In summary, the respective goods and services of
applicant and registrant are very closely related and
applicant’s mark creates a commercial impression quite
similar to the one created by the registered mark. Under
these circumstances, confusion is likely.
Decision: The refusal to register under Section 2(d)
the Lanham Act is affirmed.
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