Antillas Shoe Corporation

Trademark Trial and Appeal Board

Sep 15, 2008

No. 78630084 (T.T.A.B. Sep. 15, 2008)

Mailed: September 15, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Antillas Shoe Corporation
________

Serial No. 78630084
_______

Wendy K.B. Buskop, Buskop Law Group for Antillas Shoe
Corporation.

Daniel Brody, Trademark Examining Attorney, Law Office 115,
Tomas V. Vlcek, Managing Attorney.
_______

Before Drost, Kuhlke, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Antillas Shoe Corporation seeks registration of the
mark !SO WHAT!! (in standard characters) for “footwear and
shoes for men, women, and children,” in International Class
25.1
Registration has been finally refused pursuant to
Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the mark

1 Filed May 13, 2005, based on an allegation of first use and use
in commerce as of May 4, 2005.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78630084
2

for “clothing, namely, shirts, T-shirts, caps, socks, hats”
in International Class 25,2 as to be likely, if used in
connection with the identified goods, to cause confusion,
to cause mistake, or to deceive. Trademark Act § 2(d); 15
U.S.C. § 1052(d).
Applicant and the examining attorney filed briefs.
After careful consideration of the record, we affirm.
I. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
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 Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Rests. Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).

2 Registration No. 2291899, issued November 16, 1999, alleging a
date of first use of January 8, 1996, and first use in commerce
Serial No. 78630084
3
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); and In re Azteca Rest. Enters.,
Inc., 50 USPQ2d 1209 (TTAB 1999).
II. Discussion
A. The Similarity Or Dissimilarity of the Marks in
Their Entireties as to Appearance, Sound,
Connotation and Commercial Impression.

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. We find the marks to be highly similar in
appearance, sound, and commercial impression and identical
in connotation.
As noted, applicant’s mark is !SO WHAT!! in standard
characters, while the mark in the cited prior registration
is SO WHAT! in stylized form. Applicant contends that the
marks are different in appearance because of the
stylization of the mark in the cited registration. We

of March 19, 1997. Affidavits under Trademark Act §§ 8 and 15,
accepted and acknowledged.
Serial No. 78630084
4
agree with the examining attorney, however, in noting that
applicant seeks registration of its mark in standard
characters, that is, without regard to any font style,
size, or color. Thus, applicant’s mark could be displayed
in any stylization, including that used by the registrant.
Indeed, the marks are highly similar. Applicant’s
mark is identical in pronunciation and commercial
impression to the cited registration. The only difference
in the marks is that applicant’s mark includes an
additional exclamation point at the beginning and end.
However, this is unlikely to provide any significant
distinction; the (identical) literal portion of both marks
is likely to make far more of an impression in the mind of
the potential consumer than the appearance of the extra
exclamation points. Since the cited registration contains
the identical words and even includes an exclamation point,
to the extent they notice any distinction at all, consumers
are likely to believe that applicant’s mark is merely a
variation of the mark in the prior registration.
This factor strongly supports the examining attorney’s
refusal of registration.
Serial No. 78630084
5
C. The Similarity Or Dissimilarity And Nature Of The
Goods

Applicant identifies its goods as “footwear and shoes
for men, women, and children,” in International Class 25,
while the goods in the cited registration are identified as
“clothing, namely, shirts, T-shirts, caps, socks, hats” in
International Class 25.
Applicant notes that its goods and those of the cited
registrant are different and argues that “there is no per
se rule governing likelihood of confusion in cases
involving clothing items, but rather each case is to be
determined on its own particular facts and circumstances.”
App. Br. at 5, citing In re British Bulldog, Ltd., 224 USPQ
854 (TTAB 1984). While applicant is correct, its argument
ignores the fact that the examining attorney has gone well-
beyond arguing that the goods are related merely because
they are all items of clothing.
The examining attorney submitted thirteen third-party
registrations, based on use in commerce, and covering one
or more of both applicant’s and registrant’s goods. While
they are not evidence of use, third-party registrations
which individually cover a number of different items and
which are based on use in commerce serve to suggest that
the listed goods are of a type that may emanate from a
Serial No. 78630084
6
single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1469 (TTAB 1988), aff'd (unpublished) No. 88-
1444 (Fed. Cir. Nov. 14, 1988). Further, the examining
attorney submitted evidence from thirteen websites on which
goods identified by both applicant and the cited registrant
are being sold under the same mark and in close proximity
to each other.
The examining attorney’s submissions are convincing
evidence that the goods of the parties are related in such
a way that their sale under a highly similar mark is likely
to cause confusion. Contrary to applicant’s argument, the
fact that footwear is often sold in different sections of a
department store from many of the registrant’s goods is not
dispositive. First, the cited registration includes socks,
which often are sold in close proximity to footwear, and
are closely related in function and use. Second, the
examining attorney’s evidence indicates that consumers are
accustomed to seeing goods similar to both applicant’s and
the registrant’s originating from a common source. Thus
even if true, the mere fact that the goods are not
ordinarily sold next to each other is of little
significance.
Serial No. 78630084
7
We conclude that applicant’s goods and the goods of
the cited registrant are related, a factor which likewise
supports refusal of registration.

III. Conclusion
After careful consideration of the record evidence and
argument, we conclude that use of applicant’s mark on or in
connection with the identified goods would pose a
likelihood of confusion with the mark in the cited prior
registration.
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly affirmed.