Brown Shoe Company, Inc.v.Molly D. Robbins

Trademark Trial and Appeal Board

May 13, 2009

No. 91176273 (T.T.A.B. May. 13, 2009)

Mailed: May 13, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_______

Brown Shoe Company, Inc.
v.
Molly D. Robbins
_______

Opposition No. 91176273
to application Serial No. 78375027
filed on February 26, 2004
_______

Christopher C. Larkin of Seyfarth Shaw LLP for the Brown
Shoe Company, Inc.

Austin G. Bosarge of Turning Point Law, Inc. for Molly D.
Robbins.
_______

Before Seeherman, Kuhlke and Taylor, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Molly D. Robbins, an individual, seeks
registration of the mark PALOMITA, in standard character
form, for goods identified in the application as “shirts,
pants, shoes and hats” in International Class 25.1

1 Serial No. 78375027, filed February 26, 2004, alleging a bona
fide intention to use the mark in commerce under Section 1(b) of
the Trademark Act, 15 U.S.C. §1051(b).
THIS OPINION IS A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91176273
2
Opposer, the Brown Shoe Company, Inc., has opposed
registration of applicant’s mark on the ground that, as
applied to applicant’s goods, the mark so resembles
opposer’s previously used and registered PALOMA and PALOMA
and design marks, for various clothing and footwear such
that “customers and the relevant trade would likely be
confused as to the source, sponsorship, or affiliation of
such goods.” 15 U.S.C. §1052(d). In addition, opposer
asserts a claim of fraudulent misuse of the federal
registration symbol.
Applicant has filed an answer by which she has denied
the salient allegations.2
The evidence of record consists of the pleadings herein
and the file of the opposed application. In addition,
opposer submitted the following material under a notice of
reliance: certified copies of opposer’s pleaded
registrations, which show that the registrations are
subsisting and owned by opposer; and applicant’s responses
to certain of opposer’s interrogatories and requests for
admission. Opposer did not take any testimony. Applicant
did not take any testimony or file a notice of reliance.
Both parties filed briefs.

2 Applicant’s counterclaim to cancel opposer’s pleaded
registrations was dismissed on October 10, 2008 for failure to
prosecute. Applicant’s “affirmative defenses” are
merely amplifications of her denial of opposer’s claims.
Opposition No. 91176273
3
PRIORITY AND LIKELIHOOD OF CONFUSION
The pleaded registrations made of record, which are in
full force and effect and are owned by opposer, are
summarized as follows:
Registration No. 2993403 for the mark PALOMA (in
typed form) for “clothing, namely, belts, shirts,
blouses, pants, dresses, skirts, shorts, jackets,
coats, undergarments, footwear, hosiery and
headwear” in International Class 25, filed April
2, 2002 and issued on September 6, 2005, with the
following translation statement, “The foreign
wording in the mark translates into English as
dove”; and

Registration No. 3100693 for the mark
for “shoes” in International Class 25, filed June
23, 2005 and issued on June 6, 2006, with the
following translation statement, “The foreign
wording in the mark translates into English as
dove.”

Because opposer has made the pleaded registrations
summarized above properly of record, opposer has established
its standing to oppose registration of applicant’s mark and
its priority is not in issue. See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Opposition No. 91176273
4
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Two
key considerations are the similarities between the marks
and the similarities between the goods. 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).
In considering the factors, we have limited our
determination of likelihood of confusion to the most
relevant registration, Registration No. 2993403 for the mark
PALOMA (in typed form) for “clothing, namely, belts, shirts,
blouses, pants, dresses, skirts, shorts, jackets, coats,
undergarments, footwear, hosiery and headwear.”
With regard to the goods, the “shirts and pants”
identified in opposer’s Registration No. 2993403 are
identical to applicant’s identified “shirts and pants” and
the “footwear and headwear” identified in the registration.
2993403 encompass applicant’s identified “shoes and hats.”
Considering the channels of trade and classes of
purchasers, because the goods are, in part, legally
identical and otherwise closely related and because there
are no limitations in either the registration or the subject
application, we must presume that applicant’s and opposer’s
goods will be sold in the same channels of trade and will be
bought by the same classes of purchasers. See Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
Opposition No. 91176273
5
1001 (Fed. Cir. 2002); Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In
re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).3
In view of the above, the du Pont factors of the
similarity of the goods, the channels of trade and classes
of purchasers favor a finding of likelihood of confusion.
With regard to the conditions of sale, these goods
include general clothing items that would not be purchased
with a great deal of care or require purchaser
sophistication, which increases the likelihood of confusion.
See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1899 (Fed. Cir. 2000) (“When products are relatively
low-priced and subject to impulse buying, the risk of
likelihood of confusion is increased because purchasers of
such products are held to a lesser standard of purchasing
care”) (citations omitted). Thus, this factor also favors
opposer.
We now turn to consider the similarity or dissimilarity
of the marks when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following

3 Applicant’s argument that opposer presented no evidence of
actual usage of the goods or of the actual channels of trade is
misplaced. As noted above, where the goods are identical, as the
record establishes and applicant acknowledges (App. Br. p. 7), we
must presume overlapping trade channels and classes of
purchasers.

Opposition No. 91176273
6
principles. The test, under this du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods
offered under the respective marks is likely to result.
Moreover, where the goods are identical “the degree of
similarity [between the marks] necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 877,
23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied, 506
U.S. 1034 (1992).
In comparing the marks PALOMA and PALOMITA within the
above-noted legal parameters, we find the points of
similarity outweigh the dissimilarities. ESSO Standard Oil
Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161, 163 (D.C.
Cir. 1956). The marks are very similar in sound and
appearance, differing only in the ending by the addition of
the letters “IT” in applicant’s mark. As opposer notes, it
is the first portion of a mark that is more likely to make
an impression on potential purchasers and here the beginning
and core elements of the words are the same. See Hercules
Inc. v. National Starch & Chemical Corp., 223 USPQ 1244,
1246 (TTAB 1984) (“considering the marks NATROL and NATROSOL
in their entireties, the clearly dominant aspect of both
Opposition No. 91176273
7
marks is that the first four letters and the final two are
the same”). See also Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005); Presto Products Inc. v. Nice-
Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).
Both parties apply the doctrine of foreign equivalents
in comparing the connotation and commercial impression of
the respective marks. Applicant argues that the doctrine
should not apply in this case, but in the alternative,
applicant argues that the words have different meanings in
Spanish and this difference in connotation is sufficient to
avoid confusion. Opposer takes objection to applicant’s
translation and argues that under the doctrine of foreign
equivalents these words have similar meanings.
The evidence of record establishes that PALOMA is a
Spanish word with the English translation of “dove,” and
PALOMITA is the diminutive of the word PALOMA in the Spanish
language, meaning “little dove.” See App. Responses to Opp.
Requests for Admissions Nos. 79, 80, 82, 84-85. Applicant
asserts that PALOMITA has additional meanings in Spanish,
namely, “checkmark” and “popcorn.” During prosecution
applicant provided the translation of PALOMITA as
“checkmark.” However, while the application is of record,
the allegations in the application are not facts and must be
proven during trial. Although applicant did not take any
Opposition No. 91176273
8
testimony or file notices of reliance, applicant’s request
that we take judicial notice of the following translation is
granted:4
Palomita sustantivo femenino (Mex fam) (marca)
check (AmWE), tick (BrE);

Palomitas sustantivo femenino plural: tb ~s de
maiz popcorn.

Pocket Oxford Spanish Dictionary (Oxford University Press
2005).
The doctrine of foreign equivalents is normally applied
where one mark is in a foreign language, and the other mark
is in English. In general, the Board does not apply the
doctrine of foreign equivalents in cases where both marks
are non-English words from two different languages. See
Safeway Stores Inc. v. Bel Canto Fancy Foods Ltd., 5 USPQ2d
1980, 1982 (TTAB 1987) (French expression “bel air” v.
Italian expression “bel aria”). But see Miguel Torres S.A.
v. Casa Vinicola Gerardo Cesari S.R.L., 49 USPQ2d 2018,
2020-2021 (TTAB 1998), vacated on other grounds, 230 F.3d
1372 (Fed. Cir. 1999). We do not think the circumstances
present in this case warrant application of the doctrine.
Here, where both marks are Spanish words we must consider
the connotation of the marks to both non-Spanish-speaking
consumers and to Spanish-speaking consumers.

4 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Opposition No. 91176273
9
In English the words have no meaning and therefore,
although non-Spanish-speaking consumers would not understand
the words, because of the similarity in appearance and
pronunciation the marks likely would be perceived as having
similar meanings.5 Applicant herself has stated that, “a
purchaser in the United States, who is unlikely familiar
with the translations of Opposer’s and Applicant’s marks,
will view the marks as having the same meaning.” App. Br.
p. 7. Thus, a substantial portion of the purchasing public
would not understand the possible differences in meaning
asserted by applicant. Therefore, even if we were to accept
the translation applicant proposes, this is not sufficient
to distinguish the marks with respect to non-Spanish
speakers.
As for Spanish-speaking consumers, even if they were to
understand the multiple meanings of PALOMITA, it is clear
that one meaning of the term is “little dove,” and there is
nothing inherent in the goods that would lead a consumer to
the “checkmark” or “popcorn” meanings over the “little dove”
connotation. Applicant’s argument that she displays her
mark with a “checkmark” serving as the “I” in PALOMITA is
unavailing inasmuch as we must make our determination based

5 Opposer argues that even non-Spanish speakers would recognize
the suffix “ITA” in applicant’s mark as merely indicating a
diminutive form of the word PALOMA; however, there is no evidence
of record to support this argument.

Opposition No. 91176273
10
on the marks as depicted in the application and
registration. In this case, applicant has applied for a
standard character mark without a checkmark design, and the
registrant’s mark is in typed form; therefore, our analysis
may not be limited to any particular manner of display. In
re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB
1988) (rights reside in the word and not in any particular
form of the mark); and Sunnen Products Co. v. Sunex
International Inc., 1 USPQ2d 1744, 1747 (TTAB 1987)
(applicant seeks registration without special form or
design, therefore Board must evaluate marks on premise that
it may be displayed in any form or style of lettering).
We find that the marks overall are substantially
similar in appearance, pronunciation, meaning and commercial
impression, and that the similarities outweigh the minor
difference in the endings. We conclude that this factor
favors opposer.
Finally, applicant’s argument that there is no evidence
of actual confusion despite “opposer’s allegations that
applicant has been using the mark in connection with the
promotion or sale of goods” is not persuasive. First, there
is nothing in the record upon which to make findings of the
extent of concurrent use and the opportunity for confusion
to occur. Second, the test is likelihood of confusion and
the absence of evidence of actual confusion alone is not
Opposition No. 91176273
11
particularly probative. Weiss Ass. Inc. v. HRL Ass. Inc.,
902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir.
1990).
Thus, we conclude that the evidence of record as it
pertains to the relevant du Pont factors supports a
determination of likelihood of confusion as between
applicant’s PALOMITA mark and opposer’s PALOMA mark, such
that registration of applicant’s mark is barred under
Trademark Act Section 2(d). As noted above, applicant has
not submitted any evidence or taken any testimony to rebut
opposer’s showing.
We now turn to opposer’s second claim of fraudulent
misuse of the registration symbol. We begin by noting that
“it has been the practice of the Office to accept
explanations that demonstrate that such use was inadvertent
or without any intent to deceive or mislead and that there
has been an effort to discontinue the offending use.”
Knorr-Nahrmittel Aktiengesellschaft v. Havland
International, Inc., 206 USPQ 827, 833 (TTAB 1980) citing
S.C. Johnson & Son, Inc. v. Gold Seal Co., 90 USPQ 373
(Comm’r 1951). Mistake or inadvertence generally overcomes
a claim of fraudulent misuse. See J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §19:146 (4th
ed. updated 2009).
Opposition No. 91176273
12
Opposer contends that applicant’s admissions that “she
knew that her ‘PALOMITA’ mark was not registered in the
United States when she created, approved, and made each of
these misuses of the symbol and that such uses signified
that the ‘PALOMITA’ mark was registered in the United
States” are sufficient for a finding of fraudulent misuse.
Opposer argues that “Applicant did not take any
testimony or make any other evidence of record, so there is
no evidence of record, beyond Applicant’s unsworn statements
in her discovery responses, of the existence of any Mexican
registration, no evidence of record that any such
registration covers the goods identified in the opposed
application, and no evidence of record that Mexican law
permits the use of the ® symbol.” Opp. Br. p. 14.
To prove its claim, opposer submitted and relied on
applicant’s responses to interrogatories and requests for
admission which include the following:
Interrogatory No. 4: State in detail what
Applicant understood regarding the proper and
improper use of the Registration Symbol next to a
trademark when Applicant first used the
Registration Symbol next to Applicant’s Mark,
explain how and when Applicant came to have that
understanding, and state whether Applicant’s
understanding has ever changed and, if so how it
has changed.

Response: Applicant understood that the
Registration Symbol next to a trademark could be
used when such trademark is registered.
Applicant’s Mark is a registered trademark in
Mexico and Applicant understood she could properly
use the Registration Symbol next to Applicant’s
Opposition No. 91176273
13
Mark because of such registration. Applicant was
made aware of the possible improper use of the
Registration Symbol upon Opposer’s amended Notice
of Opposition. Counsel for Applicant advised
Applicant to consider removing the Registration
Symbol until this Opposition was resolved, even
though use of the Registration symbol may be
entirely proper.

Request No. 11: Applicant approved the use of the
Registration Symbol in the circular design shown
in Exhibit 1.

Response: Applicant admits Request No. 11, in
that Applicant’s Mark is a registered trademark in
Mexico entitling Applicant to use the Circle R
Registration Symbol next to Applicant’s Mark.
Applicant denies the request to the extent it
makes the unwarranted inference that Applicant
intended to misrepresent Applicant’s mark as being
registered in the United States.

Request No. 13: When the circular design shown in
Exhibit I was approved by Applicant, Applicant
knew that the use of the Registration Symbol next
to a trademark in the United States signifies that
the trademark is registered in the United States.

Response: Applicant admits Request No. 13 in that
Applicant’s Mark is a registered trademark in
Mexico entitling Applicant to use the Circle R
Registration Symbol next to Applicant’s Mark;
Applicant denies the request to the extent it
makes the unwarranted inference that Applicant
intended to misrepresent Applicant’s mark as being
registered in the United States.

Opp. NOR III and IV.
Opposer relies heavily on Copelands’ Enterprises Inc.
v. CNV Inc., 20 USPQ2d 1295 (Fed. Cir. 1991). However, in
that case the defendant had notified plaintiff that the mark
was federally registered when it was only the subject of a
pending application. In addition, defendant did not respond
to a letter from plaintiff pointing out the improper usage
Opposition No. 91176273
14
and demanding cessation of such activities and continued
improper use of the registration symbol. Most importantly,
that decision was on summary judgment and the Federal
Circuit in remanding the case stated that “the factual
question of intent is particularly unsuited to disposition
on summary judgment” and that “the sequence of events here
raises serious questions as to [defendant’s] purpose and
intent in using the registration notice, and more
importantly, continuing to use it after being specifically
notified of the impropriety of such use.” Id. at 1299.
Here, applicant, based on her admissions, believed her
use to be proper inasmuch as she had registered the mark in
Mexico. Applicant may rely on her discovery responses,
inasmuch as opposer has placed these responses into the
record under notice of reliance and relied on them in
support of its case. Trademark Rule 2.120(j)(7). Moreover,
the only “specific notification” was the amended notice of
opposition and applicant ceased use of the symbol after
receipt of the amended complaint.
Opposer also relies on Section 906.01 of the Trademark
Manual of Examining Procedure (TMEP) (5th ed. 2007). This
section provides that, “When a foreign applicant’s use of
the symbol on the specimens is based on a registration in a
foreign country, the use is appropriate.” While this same
section does not list Mexico as one of the countries that
Opposition No. 91176273
15
uses this symbol, we find this is insufficient to prove that
Mexico does not use this symbol; there is nothing in the
record to indicate that the TMEP section contains an
exhaustive list or that it accurately reflects Mexican law
at the time applicant used the registration symbol.
Further, even if Mexico does not provide for the use of this
symbol, there is no proof that applicant knew this and
intended to deceive by using the symbol. In addition, there
is no proof that applicant distributed hang tags with this
symbol in the United States and applicant’s use on a website
that can be accessed from anywhere in the world, including
Mexico, does not by itself amount to fraudulent misuse.
The circumstances in the case before us are more akin
to those presented in The Du-Dad Lure Co. v. Creme Lure Co.,
143 USPQ 358 (TTAB 1964), where a mistaken belief that state
registration of a trademark entitled use of the registration
symbol did not constitute fraud or misrepresentation, and
Shatel Corp. v. Mao Ta Lumber and Yacht Corp., 697 F.2d 1352
(11TH Cir. 1983), where belief that foreign registrations
entitled use of a registration symbol in a magazine that
would be distributed in countries where the mark was
registered did not constitute a fraudulent
misrepresentation. More importantly, upon learning of the
possible misuse through opposer’s addition of the fraud
claim, applicant ceased using the symbol. Based on this
Opposition No. 91176273
16
record, opposer did not prove its claim of fraudulent
misuse.
Decision: The opposition is sustained as to opposer’s
claim of priority and likelihood of confusion under Section
2(d) of the Trademark Act and dismissed as to the claim of
fraudulent misuse.