Bon Voyage Inc.

Trademark Trial and Appeal Board

Aug 1, 2005

No. 78176021 (T.T.A.B. Aug. 1, 2005)

Mailed: August 1, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bon Voyage Inc.1
________

Serial No. 78176021
_______

Indie K. Singh, Esq. for Bon Voyage Inc.

Karen Bracey, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
_______

Before Chapman, Grendel and Drost, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:

On October 18, 2002, Bon Voyage Inc. (a New York
corporation) filed an application to register on the
Principal Register the mark DEJA VU in standard character
form for “women’s wearing apparel, namely suits, jackets,

1 Applicant submitted a photocopy of a New York Department of
State “Certificate of Amendment of the Certificate of
Incorporation of Bon Voyage Inc.” changing the corporate name
from Bon Voyage Inc. to Zani Group Inc. However, that document
has not been recorded with the Assignment Branch of the USPTO.
See Section 10 of the Trademark Act, 15 U.S.C. §1060.
Accordingly, applicant’s name in this application remains “Bon
Voyage Inc.”
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78176021
2
blouses, skirts, trousers, shorts, dresses and women’s
sportswear namely suits, shirts, blouses, jackets, skirts,
trousers, shorts, rompers and jumpsuits.” The application
includes the following statement: “‘Déjà vu’ is an
expression from the French language and means ‘Previously
seen’ or ‘Already seen,’” and the application is based on
applicant’s claimed date of first use and first use in
commerce of October 15, 2002.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to its
identified goods, so resembles the mark shown below

(“creations” disclaimed) for “on-line retail services
featuring women’s lingerie and undergarments,” as to be
likely to cause confusion, mistake or deception.2
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant

2 Registration No. 2582041, issued June 18, 2002.
Ser. No. 78176021
3
to the factors bearing on the likelihood of confusion
issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(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 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We turn first to a consideration of applicant’s goods
and registrant’s services. It is well settled that goods
and/or services need not be identical or even competitive
in order to support a finding of likelihood of confusion.
Rather, it is sufficient that the goods and/or services are
related in some manner or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association between the producers of the goods and/or
services. See In re Melville Corp., 18 USPQ2d 1386 (TTAB
Ser. No. 78176021
4
1991); and In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
Confusion in trade can occur from the use of similar
marks for products on the one hand and for services
involving those products on the other hand. See In re
Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988); Safety-Klean Corporation v. Dresser
Industries, Inc., 518 F.2d 1399, 186 USPQ 476 (CCPA 1975);
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB
1988); and Steelcase Inc. v. Steelcare Inc., 219 USPQ 433
(TTAB 1983).
Of course, it has been repeatedly held that in
determining the registrability of a mark, this Board is
constrained to compare the goods and/or services as
identified in the application with the goods and/or
services as identified in the registration. See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987).
In this case, applicant’s goods are identified as
“women’s wearing apparel, namely suits, jackets, blouses,
skirts, trousers, shorts, dresses and women’s sportswear
namely suits, shirts, blouses, jackets, skirts, trousers,
Ser. No. 78176021
5
shorts, rompers and jumpsuits,” while registrant’s services
are identified as “on-line retail services featuring
women’s lingerie and undergarments.”
The use of similar marks on goods and in connection
with services featuring those goods will generally result
in consumer confusion as to the source or sponsorship of
those goods and services. See In re Hyper Shoppes (Ohio),
Inc., supra; In re United Service Distributors, Inc., 229
USPQ 237 (TTAB 1986); In re United States Shoe Corp., 229
USPQ 707 (TTAB 1985); and In re Phillips-Van Heusen Corp.,
228 USPQ 949 (TTAB 1986). The fact that applicant’s
identification of goods does not specifically include the
items “lingerie” and “undergarments” which are the featured
items in registrant’s identified online retail services
does not mean that the goods and services are not related.
Clearly, lingerie and undergarments are clothing items.
Various clothing items have been held to be related in the
relevant sense. See Kangol Ltd. v. KangaROOS U.S.A. Inc.,
974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992) (Court
affirmed Board holding of likelihood of confusion between
KangaROOS and a kangaroo design for clothing, namely,
athletic shoes, sweatsuits and athletic shirts and KANGOL
and a kangaroo design for golf shirts having collars);
General Shoe Corporation v. Hollywood-Maxwell Co., 277 F.2d
Ser. No. 78176021
6
169, 125 USPQ 442 (CCPA 1960) (Court affirmed Board holding
of likelihood of confusion for the same mark INGENUE used
on shoes and hosiery, and brassieres); In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991) (ESSENTIALS in stylized
form for women’s shoes against ESSENTIALS for women’s
clothing, namely, pants, blouses, shorts, and jackets); In
re Apparel Ventures, Inc., 229 USPQ 225 (TTAB 1986) (SPARKS
BY SASSAFRAS in stylized form for women’s separates, namely
blouses, skirts and sweaters against SPARKS in stylized
form for shoes, boots and slippers); In re Pix of America,
Inc., 225 USPQ 691 (TTAB 1985)(NEWPORTS for women’s shoes
against NEWPORT for outer shirts); In re Alfred Dunhill
Limited, 224 USPQ 501 (TTAB 1984)(DUNHILL in stylized
lettering for various items of men’s clothing including
belts against DUNHILL for shoes); and In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984) (BOOMERANG for athletic
shoes against BOOMERANG and design for men’s shirts).
Applicant’s goods, women’s clothing items, such as
suits, jackets, blouses, skirts, and the like, are
commercially closely related to the retail service of
selling women’s clothing items, including lingerie and
undergarments, online. Thus, we find that applicant’s
goods and registrant’s services are sufficiently related
that their marketing under the same or similar marks would
Ser. No. 78176021
7
result in source confusion on the part of the purchasing
public. That is, applicant’s identified women’s clothing
items and registrant’s online retail services featuring
lingerie and undergarments are related within the meaning
of the Trademark Act. See Hewlett-Packard Company v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002)(“even if the goods and services in
question are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin of the goods and services”).
Applicant’s identification of goods is not limited as
to trade channels and thus could be sold online which is
where registrant’s services are offered, as stated in
registrant’s identification of goods. There is no
restriction in either identification as to purchasers.
Thus, the respective goods and services, as identified,
would be sold in the same or at least overlapping channels
of trade to the same or overlapping classes of purchasers.
Applicant’s argument pointing out that applicant’s
goods and registrant’s services are classified in different
International Classes by the USPTO is unpersuasive.
Classification is an administrative matter. See National
Football League v. Jasper Alliance Corp., 16 USPQ2d 1212,
footnote 5 (TTAB 1990).
Ser. No. 78176021
8
We turn next to a consideration of applicant’s mark
and the cited registrant’s mark. It is well settled that
marks must be considered in their entireties as to the
similarities and dissimilarities thereof. However, our
primary reviewing Court has held that in articulating
reasons for reaching a conclusion on the question of
likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature or portion of a mark.
That is, one feature of a mark may have more significance
than another. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842 (Fed. Cir. 2000); Sweats Fashions Inc.
v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798
(Fed. Cir. 1987); and In re National Data Corporation, 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
Applicant’s mark is “DEJA VU” and that is the dominant
portion of registrant’s mark. In registrant’s mark, the
word “creations,” being a descriptive term in relation to
women’s clothing and the sale thereof, while not ignored in
our consideration, is nonetheless of less trademark
significance to consumers. The initials DV (in stylized
lettering) appearing in registrant’s mark may be perceived
by consumers as the acronym or initials used to refer to
the wording “deja vu,” particularly as they are capitalized
Ser. No. 78176021
9
and written in the same lettering both as the initials and
as the initial capital letters in the words. In addition,
the Examining Attorney submitted evidence that clothing
designers sometimes include initials in their brands (e.g.,
“CK by Calvin Klein”).
In terms of the similarities of the marks, applicant’s
arguments regarding each specific difference between the
marks are not persuasive. The initials DV and the stylized
lettering of the letters and words in registrant’s mark, do
not offer sufficient differences to create a separate and
distinct commercial impression. See In re Dixie
Restaurants Inc., supra. It is the dominant word, DEJA VU,
not the stylized lettering nor the initials nor the
descriptive word “creations” in registrant’s mark, that
would be used to call for the involved goods and services.
Also, it is true that registrant’s mark is in stylized
lettering whereas applicant’s mark is in standard character
(typed) form. However, our primary reviewing Court, the
Court of Appeals for the Federal Circuit, has stated that
“the argument concerning a difference in type style is not
viable where one party asserts rights in no particular
display. By presenting its mark merely in a typed drawing,
a difference cannot legally be asserted by that party.”
Ser. No. 78176021
10
Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937,
939 (Fed. Cir. 1983). (Emphasis in original.)
The connotation of the word “deja vu,” which is
defined in The American Heritage Dictionary (Fourth Edition
2000) as “n. 1. Psychology The illusion of having already
experienced something actually being experienced for the
first time. …,” is the same for both marks.3 This could
include the connotation suggested by applicant (in relation
to registrant’s mark) that “deja vu” connotes “vintage
clothing.”
Moreover, the differences in the marks may not be
recalled by purchasers seeing the marks at separate times.
The emphasis in determining likelihood of confusion is not
on a side-by-side comparison of the marks, but rather must
be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of the many trademarks encountered; that is, the
purchaser’s fallibility of memory over a period of time
must be kept in mind. See Grandpa Pidgeon’s of Missouri,
Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA
1973); and Spoons Restaurants Inc. v. Morrison Inc., 23

3 The Board takes judicial notice of this dictionary definition.
See The University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983). See also, TBMP §704.12 (2d
ed. rev. 2004).
Ser. No. 78176021
11
USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir., June 5,
1992).
When considered in their entireties, we find that the
respective marks are similar in sound, appearance,
connotation and commercial impression. See Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005); and In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).
Applicant argued that other “du Pont factors to
consider is [sic] the number and nature of similar marks in
use on similar goods and the variety of goods on which a
mark is or is not used. There are over 30 distinct uses of
the phrase ‘déjà vu’ in the TARR [USPTO] archives.”
(Brief, p. 6.)4 Applicant has combined two separate du Pont
factors. As to the number and nature of similar marks in
use on or in connection with similar goods and/or services,
applicant referred only in the very broadest of terms to 30
records in the USPTO’s system without providing proper
copies thereof. The Board does not take judicial notice of
applications (which have virtually no probative value)
and/or of registrations (which have limited probative

4 See also, applicant’s response dated September 16, 2003,
unnumbered page 4. The Examining Attorney’s “Objection to
Applicant’s Evidence Not Made of Record” (brief, unnumbered page
2) is overruled.
Ser. No. 78176021
12
value). See In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB
1994); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB
1992); and In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
Most importantly, even if the 30 records are all
third-party registrations and if they had been properly
introduced into the record, registrations do not establish
that the marks shown therein are in use, or that consumers
are so familiar with them that they are able to distinguish
among such marks. There is no evidence of record of any
third-party registration, much less any use by any third
party (including the cited registrant)5 of any mark
including the word DEJA VU for clothing or retail services
involving the sale of clothing.
As to the du Pont factor of the variety of
goods/services on which a mark is or is not used, it does
not relate to the variety of goods/services identified in
myriad third-party registrations. Instead, this factor
refers to the variety of goods/services on which a party
uses its mark (e.g., a “house mark, ‘family’ mark, product
mark”). There is no evidence of record that either
applicant or registrant uses their respective marks as
house marks/product marks.

5 Applicant refers to registrant’s website (see e.g., brief, p.
5), but applicant did not submit any evidence thereof.
Ser. No. 78176021
13
Applicant acknowledges that there is no evidence of
record as to the following du Pont factors: (i) the
conditions under which and the buyers to whom sales are
made, (ii) fame, (iii) actual confusion, (iv) applicant’s
right to exclude others, (v) and extent of potential
confusion. (Brief, p. 7.)
In view of the similarities of the marks, and the
relatedness of the identified goods and services, with the
same or overlapping channels of trade and purchasers, we
find that applicant’s mark for its identified goods is
likely to cause confusion with the mark in the cited
registration.
Although we have no doubt in this case, any doubt on
the question of likelihood of confusion must be resolved
against applicant as the newcomer and the newcomer has the
opportunity to avoid confusion, and is obligated to do so.
See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315
(Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc.,
supra.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.