Blue Heaven Hosiery Co., Inc.

Trademark Trial and Appeal Board

May 26, 2009

No. 76687280 (T.T.A.B. May. 26, 2009)

Mailed:
May 26, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Blue Heaven Hosiery Co., Inc.
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Serial No. 76687280
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Myron Amer of Myron Amer P.C., for Blue Heaven Hosiery Co., Inc.

David C. Reihner, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney).
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Before Walsh, Mermelstein, and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Blue Heaven Hosiery Co., Inc. (“applicant”) filed an
application to register the mark BBW for goods ultimately
identified as “women’s knee high stockings of nylon and spandex
construction material and not including upper torso clothing,”
in International Class 25.1
The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of

1 Serial No. 76687280, filed March 3, 2008, pursuant to Section 1(a) of
the Trademark Act, 15 U.S.C. §1051(a), alleging first use and first
use in commerce on January 10, 2000.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76687280
2
1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the registered mark BBW, as shown below, for “clothing
for over-sized women – namely, jeans, blouses, lingerie, skirts,
and slacks” in International Class 25,2 that when used on or in
connection with applicant’s identified goods, it is likely to
cause confusion or mistake or to deceive:

Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs, and applicant filed a reply brief. For the reasons
discussed herein, the Board affirms the refusal to register.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion

2 Registration No. 1236403, issued May 3, 1983, claiming first use and
first use in commerce on November 5, 1979; Sections 8 and 15
affidavits accepted and acknowledged. Renewed. The registration
includes the following description: “In the drawing the lettering is
lined for metallic gold and the background is lined for navy blue.”
Serial No. 76687280
3
analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in
the marks”). We discuss each of the du Pont factors as to which
applicant or the examining attorney submitted argument or
evidence.
The Marks
We consider and compare the appearance, sound, connotation
and commercial impression of the marks in their entireties. In
re E. I. du Pont De Nemours & Co., 177 USPQ at 567. The cited
registration consists of the words “BBW” in design form. These
are also the same letters, presented in the same order, in
applicant’s standard character mark. Thus, the word portions of
the marks are identical, and the only difference between them is
the color design in the registered mark.
With respect to the design portion of applicant’s mark,
where a mark consists of words as well as a design, the words
are generally dominant because the words will be used to call
for or refer to the goods. CBS Inc. v. Morrow, 708 F.2d 1579,
1581-82 (Fed. Cir. 1983); In re Dakin’s Miniatures Inc., 59
UPSQ2d 1593, 1596 (TTAB 2001); In re Appetito Provisions Co.,
Serial No. 76687280
4
Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). This is particularly so
in this case, where the registrant’s mere addition of color to
its mark does not change the likely commercial impression of the
letters BBW. The design does not change the connotation of the
cited registered mark, which is the same as that of applicant’s
mark.
In sum, the marks are nearly identical in appearance,
sound, meaning and commercial impression. In view of the
foregoing, we find that the first du Pont factor weighs heavily
in favor of finding a likelihood of confusion.
The Goods and Channels of Trade

In determinining the similarity or dissimilarity of the
goods, we note that the more similar the marks at issue, the
less similar the goods or services need to be for the Board to
find a likelihood of confusion. In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001); In re Concordia Int’l Forwarding Corp.,
222 USPQ 355, 356 (TTAB 1983). Goods or services need not be
identical or even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that the goods or
services are related in some manner or that some circumstances
surrounding their marketing are such that they would be likely
to be seen by the same persons under circumstances which could
give rise, because of the marks used or intended to be used
therewith, to a mistaken belief that they originate from or are
Serial No. 76687280
5
in some way associated with the same producer or that there is
an association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
In order to demonstrate the similarity of the goods
identified in the application to those in the cited
registration, the examining attorney submitted over a dozen use-
based, third-party registrations that identify goods from both
the application and the cited registration. Copies of use-
based, third-party registrations may serve to suggest that the
goods are of a type which may emanate from a single source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993). Applicant argues that its identified goods do not
overlap with those in the cited registration since applicant has
added the limitation of “not including upper torso clothing,”
thereby avoiding a likelihood of confusion. However, this
limitation does not avoid a likelihood of confusion. The goods
in the cited registration are not limited to upper torso
clothing. In fact some, such as “skirts” and “slacks” are
clearly intended to be worn on the lower torso. Furthermore,
the third-party registrations cover, variously, every one of the
goods identified in the cited registration -- “jeans,”
“blouses,” “lingerie,” “skirts” and “slacks” -- alongside
applicant’s “knee-high stockings.” Finally, although the
clothing items identified in the cited registration are limited
Serial No. 76687280
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to “over-sized women,” the clothing identified in the
application are not limited by size, and may include the same
consumers.
In the absence of specific limitations in the registration,
we must presume that registrant’s goods will travel in all
normal and usual channels of trade and methods of distribution.
Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983). See In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992) (because there are no limitations as to channels of
trade or classes of purchasers in either the application or the
cited registration, it is presumed that the services in the
registration and the application move in all channels of trade
normal for those services, and that the services are available
to all classes of purchasers for the listed services). Since
there are no limitations on the channels of trade in applicant’s
identification of goods either, we must make the same
presumption with regard to applicant’s goods. In other words,
there is nothing that prevents the registrant’s various clothing
items from being sold in the same channels of trade and to the
same classes of consumers that purchase applicant’s knee-high
stockings (and vice versa). Accordingly, we find that these du
Pont factors weigh in favor of finding a likelihood of consumer
confusion.
Serial No. 76687280
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Balancing the Factors
In view of our findings that the marks are nearly
identical, the goods are similar, and the goods move in the same
channels of trade to the same classes of consumers, we find that
applicant’s mark is likely to cause confusion with the mark in
the cited registeration.
Decision: The refusal to register is affirmed.