Atico Int’l. USA Inc.

Trademark Trial and Appeal Board

Mar 6, 2003

No. 76317631 (T.T.A.B. Mar. 6, 2003)

Paper No. 11
Mailed:
March 6, 2003
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Atico International USA Inc.
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Serial No. 76/317,631
_______
Peter T. Cobrin and Clyde A. Shuman of Gibbons Del Deo Dolan
Griffinger & Vecchione for Atico International USA Inc.
Monique C. Miller, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Cissel, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Atico International USA Inc. seeks registration on the
Principal Register for the mark as shown below:
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76/317,631
- 2 -
for “sunglasses” in International Class 9, and “footwear,
namely flip-flops and water shoes,” in International Class
25.1
This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has held that applicant’s mark, as used in
connection with these goods, would be likely to cause
confusion, to cause mistake or to deceive consumers, in view
of four prior registered marks owned by three different
registrants. The cited marks are as follows:

SHORELINE
for “apparel – namely,
rainwear” in International
Class 252
for “T-shirts” in
International Class 253
1 Application Serial No. 76/317,631 was filed on September 26,
2001, based upon applicant’s allegation of a bona fide intention to
use the mark in commerce.
2 Registration No. 1,221,860 issued on December 28, 1982;
Section 8 affidavit accepted and Section 15 affidavit acknowledged.
3 Registration No. 1,671,827 issued on January 14, 1992; Section
8 affidavit accepted and Section 15 affidavit acknowledged; first
renewal. Registrant herein, Abel Industries, Inc., claimed
ownership of Registration No. 1,221,860, supra.
Serial No. 76/317,631
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for “retail store services in
the field of sporting
equipment,” in International
Class 424

SHORELINE
for “binoculars and parts
therefore,” in International
Class 95
Responsive to the refusal to register, applicant argues:
that the various composite marks are quite dissimilar as to
overall commercial impressions; that the Trademark Examining
Attorney has improperly dissected the marks in her analysis;
that beachwear and rainwear are not closely related and would
not be placed in proximate areas in the retail setting; that
there is no indication that “the goods sold via the
identified retail services are sold under the same name”
(applicant’s response of April 26, 2002); that sunglasses are
not closely related to precision optical instruments like
binoculars; that each of these respective goods moves in a
distinct channel of trade (or at the very least is located in
markedly different sections of large retail outlets); that
4 Registration No. 1,575,736 issued on January 2, 1990; Section
8 affidavit accepted and Section 15 affidavit acknowledged; first
renewal. The words “Board Shop” are disclaimed apart from the mark
as shown.
5 Registration No. 2,304,844 issued on December 28, 1999.
Serial No. 76/317,631
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items like surfboards6 and binoculars are purchased with great
care; the third-party registrations submitted by the
Trademark Examining Attorney with her Office actions of
November 19, 2001 and of June 3, 2002 are of little probative
value inasmuch as they do not show actual use in the
marketplace; and the fact that three SHORELINE-formative
marks for arguably related items of clothing have been
permitted to coexist on the federal trademark register
undercuts the Trademark Examining Attorney’s position herein.
On the other hand, the Trademark Examining Attorney
contends: that when applicant’s mark is compared with the
marks in the cited registrations, the literal element in each
(“Shoreline”) is significant and dominant, creating similar
overall commercial impressions in all the marks; and that
Lexis/Nexis excerpts and Internet evidence demonstrate that
the several sets of goods under discussion herein are
related, and that these respective goods will move through
the same channels of trade to the same class of consumers.
Both applicant and the Trademark Examining Attorney have
fully briefed the case on appeal; however, applicant did not
request an oral hearing before the Board.
6 We note that none of the cited registrations has listed any
goods identified as “surfboards,” although the composite service
mark image of the ‘736 registration does contain representations of
two different surfboards, and includes the word “Board” among its
literal elements.
Serial No. 76/317,631
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Our determination under Section 2(d) is based upon 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). In the analysis of
likelihood of confusion presented by this case, two key
considerations are the similarities of the marks and the
similarities of the goods and/or services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
We begin our analysis by turning to a comparison of the
respective marks. The literal portion of applicant’s mark is
the word “Shoreline.” This is identical to the literal
portions of the ‘860, ‘827 and ‘844 registrations. As
correctly noted by the Trademark Examining Attorney, the
literal elements of such marks are much more important than
subordinate design features because consumers will call for
the goods in the marketplace using that literal portion of
the marks. See In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987). While applicant correctly describes the design
differences between its composite mark (“three ellipses of
increasing size”) and Abel Industries’ composite mark
(“setting sun” and “gulls or other waterfowl”), in each of
these marks, the only way to call for the respective goods is
Serial No. 76/317,631
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with the term “Shoreline.” Hence, these marks are aurally
identical. As to appearance, the literal portion is also the
most prominent feature of each mark and will be the image
consumers will remember of the composite marks. All have
identical connotations suggestive of “the line where a body
of water and the shore meet.”7 Hence, applicant’s mark has an
overall commercial impression that is quite similar to that
which each of these three cited marks has in connection with
their associated goods.
As to the cited service mark (SHORELINE BOARD SHOP and
surfer design), it clearly contains two additional literal
elements not present in applicant’s mark. However, the
highly descriptive (or generic) terminology, “Board Shop,” is
disclaimed apart from the mark as shown. For this reason,
the Trademark Examining Attorney correctly places less
emphasis on this portion of the composite when comparing the
marks in their entireties. Moreover, as to connotation, the
active surfer motif within this composite mark serves to
reinforce the suggestive term “Shoreline” – the surfer has
caught a wave towards the shoreline, which also happens to be
the optimal location for such a shop. Accordingly, we find
7 Merriam Webster’s Collegiate Dictionary,
Serial No. 76/317,631
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then that applicant’s mark is confusingly similar in overall
commercial impression to each of the cited marks.
We turn then to the similarity or dissimilarity and
nature of the goods or services as described in the instant
application and in connection with which the cited marks are
registered. The instant application identifies goods in two
classes: footwear, namely flip-flops and water shoes (in
Class 25) and sunglasses (in Class 9).
We begin our discussion of this du Pont factor by
comparing applicant’s casual footwear, specifically flip-
flops and water shoes, with the clothing items listed in the
first two cited registrations. Properties of the same
registrant, one lists rainwear (Registration No. 1,221,860)
and the second lists T-shirts (Registration No. 1,671,827).
Applicant points out that its footwear and registrant’s
rainwear are used in “climatically diametrically opposed”
environments (a sunny beach versus a rainstorm?). However,
this is a distinction without a difference. The Trademark
Examining Attorney has demonstrated that national retailers
like L.L. Bean and Old Navy sell both rainwear and water
shoes in close proximity. Moreover, we presume that flip-
flops and water shoes could well be worn at the beach or
during a summer thunderstorm. See also In re Dexter Shoe
Company, 158 USPQ 684 (TTAB 1968). Furthermore, other than
Serial No. 76/317,631
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rainwear, all the other relevant items of apparel are on the
casual end of the clothing spectrum. In this vein, the
Trademark Examining Attorney submitted Lexis/Nexis excerpts
repeatedly referring to individuals who are wearing “T-shirts
and flip-flops.” This relationship between the respective
goods is supplemented with evidence from Internet webpages
showing that T-shirts and flip-flops are marketed on the same
page, and with third-party registrations where the same mark
is registered for both types of casual apparel.
The services in cited Registration No. 1,575,736 are
recited as follows: “retail store services in the field of
sporting equipment.” While the words BOARD SHOP, the outline
of a surfboard and the picture of an active surfer may
suggest the sale of surfing goods, the actual recital of
services is clearly not limited to the sale of surfboards.
In fact, the Trademark Examining Attorney has shown from
registrant’s own webpage that its retail merchandise includes
eyewear, footwear and other beach clothing. Accordingly, we
find that this recital of services would include the sale of
specific items like sunglasses, flip flops and water shoes.
We turn then to a determination of the relatedness of
sunglasses and binoculars. The Trademark Examining Attorney
has introduced into the record nine third-party registrations
where the same mark is registered for both sunglasses and
Serial No. 76/317,631
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binoculars. Copies of screen prints from a number of
Internet websites show that sunglasses and binoculars are
promoted side by side as two types of “optics” or “optical
goods.” Like large telescopes, sports scopes and
microscopes, a person’s eyeglasses, sunglasses and binoculars
incorporate optical glass lenses as key components. Clearly,
applicant’s sunglasses are designed to protect one’s eyes
from the sun’s glare and resulting fatigue, while the
registrant’s goods are designed to focus clearly on images
that are relatively far away. However, given the realities
of the marketplace, this distinction as to the function or
application of these optical goods is not a critical
difference in making a likelihood of confusion determination
under the Lanham Act herein.
As to a related du Pont factor, it is clear from the
record – i.e., actual retail advertisements drawn from the
real marketplace and placed into the record by the Trademark
Examining Attorney – that it is not unusual for sunglasses
and binoculars to move through the same channels of trade.
Furthermore, as noted above, flip-flops, T-shirts and
rainwear are also frequently available through the same
retail channels of trade.
Finally, applicant argues, without any proof, that
“binoculars and parts therefor are purchased with a high
Serial No. 76/317,631
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degree of care” (applicant’s response of April 26, 2002).
Presumably this argument is based on the logic that the
expense of a pair of binoculars prompts a greater degree of
care in the purchase of such items. However, this conclusion
certainly does not follow from the evidence placed into the
record by the Trademark Examining Attorney. For example, one
pair of binoculars the Trademark Examining Attorney found
advertised on the Internet retails for less than twenty-five
dollars.8
In conclusion, we find that applicant’s mark is
confusingly similar to each of the cited marks, that
applicant’s listed items of footwear are related to the
clothing items and retail sporting good services of the cited
registrations, that sunglasses are related to binoculars, and
that in each of these cases, the respective goods move
through the same channels of trade to the same class of
ordinary consumers.
Decision: The refusal to register under Section 2(d) of
the Trademark Act is hereby affirmed.
8 accessed on April 26, 2002.
On this website, the Celestron binoculars are advertised at $24.98.