Calrio Corp.

Trademark Trial and Appeal Board

Jan 7, 1998

No. 75020313 (T.T.A.B. Jan. 7, 1998)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN 7, 98
Paper No. 15
RFC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Calrio Corporation
________
Serial No. 75/020,313
_______
Calrio Corporation, pro se.
Midge F. Butler, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Simms, Cissel and Hohein, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On November 15, 1995, applicant filed an application to
register the mark “LADY ESSENCE” on the Principal Register
for “body shapers and health and beauty aids,” in Class 25.
The application was based on applicant’s assertion that it
possessed a bona fide intention to use the mark in commerce
in connection with the specified goods.
In addition to requiring amendment to the
identification-of-goods clause and a disclaimer of the word
“LADY,” the Examining Attorney refused registration under
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2
Section 2(d) of the Act on the ground that if applicant’s
mark were applied to the goods set forth in the application,
it would so resemble the mark “ESSENCE,” which is registered
for “panty hose,”1 and “clothing, namely, t-shirts,”2 that
confusion would be likely.
Applicant responded by amending the identification-of-
goods clause and entering the requested disclaimer, which
pertained only to the goods in Class 25. The
identification-of-goods clause was amended to read “health
and beauty aids, namely, lotions and creams for topical
application to a person’s skin, in International Class 3;
and, body shapers, in International Class 25.” Applicant,
in support of its arguments that confusion is not likely,
included copies of five third-party registrations for marks
incorporating the word “ESSENCE,” together with a copy of
printed materials from packaging for a body shaper sold
under the mark “LADY DIANA” by a company which is related to
applicant.
Applicant argued that confusion is not likely because
the third-party registrations establish that the term
“ESSENCE” is in common use for women’s health care and

1 Reg. No. 1,893,636 issued to Essence Communications, Inc. on
May 9, 1995.
2 Reg. No. 1,204,615 issued to the same entity on August 10,
1982. An affidavit under Section 8 of the Act was subsequently
submitted.
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3
clothing products, and is therefore weak in source-
identifying significance. The body shaper packaging was
submitted to demonstrate that body shapers are different
from the goods listed in the cited registrations. The goods
are pictured and described in the text of these materials.
Body shapers appear to be foundation garments similar to
girdles or corsets.
The Examining Attorney was not persuaded by applicant’s
argument, and the refusal to register was made final in the
second Office Action. In support of her conclusion that
“ESSENCE” is the dominant portion of applicant’s mark, she
attached copies of a number of third-party registrations for
clothing marks in which the term “LADY” is disclaimed.
Applicant timely filed a request for reconsideration,
but although the refusal as to the goods in Class 3 was
withdrawn, the Examining Attorney remained of the opinion
that confusion would be likely with respect to the Class 25
goods.
Applicant appealed. Both applicant and the Examining
Attorney filed briefs. Applicant’s brief was accompanied by
a copy of a dictionary definition of the word “essence” as
meaning “the basic or intrinsic constituent or quality of a
thing.” Attached to the brief of the Examining Attorney was
a photocopy of a dictionary definition of the same word as
connoting, inter alia, “a perfume or scent.” Applicant
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filed a reply brief, but did not request an oral hearing
before the Board.
Subsequent to the filing of the reply brief, the
attorney who to that point represented applicant petitioned
to withdraw as applicant’s attorney. The Board granted the
petition, but applicant did not designate a new attorney in
this matter.
The only issue before the Board in this appeal is
whether confusion would be likely between the registered
mark “ESSENCE,” for panty hose or t-shirts, and applicant’s
mark “LADY ESSENCE,” if it were to be used in connection
with body shapers. After careful consideration of the
record in this appeal and the relevant legal principles and
precedents, we hold that confusion would be likely with
respect to the mark which is registered for panty hose.
As is often the case in resolving appeals on the issue
of likelihood of confusion, our analysis centers around a
comparison of the marks and the goods with which they are,
or, in the case of this applicant, will be, used. Because
the marks are similar and the goods set forth in the
application are related to those specified in the cited
registrations, confusion is likely and registration of
applicant’s mark is barred by Section 2(d) of the Act.
The arguments of applicant and the Examining Attorney
center around the similarity of the marks, with very little
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discussion of the similarity of the goods. Applicant does
contend, however, primarily in its reply brief, that its
body shapers are “intended for ‘a specialized and an
entirely different purpose’ than the goods in the applied
registrations.” (Reply brief, p.2). Applicant goes on to
argue that because body shapers are worn underneath other
clothing and are ordinarily not visible to others during
normal use, and because they are used for a very specific
and different purpose than panty hose or t-shirts are, such
goods “are not likely to be manufactured by entities
offering registrant’s goods.” (Reply brief, p. 4).
The Examining Attorney correctly notes that in order
for confusion to be likely, the goods in question need not
be identical or even competitive. All that is necessary is
that they be related in some manner, or that the conditions
surrounding their marketing are such that they could be
encountered by the same purchasers under circumstances that
would give rise to the mistaken belief that the goods
emanate from a common source. In re International Telephone
& Telegraph Corp., 197 USPQ 910 (TTAB 1978). She cites a
number of decisions by the Board and our principal reviewing
Court wherein confusion was found when similar marks were
used on a wide variety of apparel items, from both
“underwear” and “neckties,” Jockey International, Inc. v.
Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992), to
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“brassieres and girdles,” on one hand, and “slacks for men
and young men,” on the other. Esquire Sportswear Mfg. Co.
v. Genesco Inc., 141 USPQ 400 (TTAB 1964). She contends
further that the fact that registrant registered its mark
for panty hose thirteen years after it registered it for t-
shirts demonstrates that clothing manufacturers can be
expected to expand their clothing lines to include
undergarments such as body shapers. Applicant disagrees.
We do not need to speculate as to why the owner of the
cited registrations registered its mark for panty hose long
after it registered it for t-shirts. It is well established
that in the absence of any restrictions in the
identifications of the goods in the application and the
cited registrations, the goods named therein must be assumed
to move through all normal channels of trade for such goods
and to reach all normal purchasers of such products.
Alliance Manufacturing Co., Inc. v. ABH Diversified
Products, Inc., 226 USPQ 348 (TTAB 1985). Notwithstanding
the somewhat different purposes for which body shapers and
panty hose are used, such goods are both sold in the women’s
departments of department stores. They are purchased by or
for women and may be worn simultaneously. It is not
unreasonable to conclude that a woman, or, for that manner,
a man who is shopping for someone else, would encounter both
panty hose and undergarments such as the body shapers of
Ser No. 75/020313
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applicant on the same visit to the same department in the
same store. Under these circumstances, if the goods were to
bear similar trademarks, confusion would clearly be likely.
Turning then to the marks in the instant case, we need
not become entangled in the extended arguments of applicant
and the Examining Attorney concerning the probative effect
of applicant’s disclaimer of the word “LADY.” The clear
rule is that in resolving the question of whether confusion
is likely, we must consider the marks in their entireties,
in the same way that they are perceived by the purchasing
public, rather than dissecting them into their component
parts. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687
(Fed. Cir. 1993). The fact that an arguably descriptive
word has been disclaimed has no effect on the resolution of
this issue. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). Nonetheless, under appropriate
circumstances, it is not unreasonable to recognize that one
word or component of a mark may be dominant in creating the
commercial impression engendered by a particular mark.
Chemical New York Corp. v. Conmar Form Systems, Inc., 1
USPQ2d 1139 (TTAB 1986). Descriptive matter, whether or not
it is disclaimed, may be less significant than another part
of a particular trademark. In re National Data Corp.,
supra. Ordinarily, one may not appropriate the mark of
another and avoid a finding of likelihood of confusion
Ser No. 75/020313
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simply by adding a non-distinctive word to the prior-used
mark. In re Denise, 225 USPQ 624 (TTAB 1985).
When these principles are considered in view of the
marks in the case at hand, we conclude that these marks in
their entireties are similar. The word “LADY” per se has
obvious descriptive significance in connection with women’s
foundation garments such as body shapers. In view of this
significance, we can reasonably conclude that the term
“ESSENCE” will play a more significant role in determining
the commercial impression of applicant’s mark as a whole.
In light of the fact that the same word, “ESSENCE,”
constitutes the entirety of the registered mark, we find
that confusion would be likely if both marks, “ESSENCE” and
“LADY ESSENCE,” were used on these related products for
women. A shopper in the women’s department of a department
store who is familiar with the “ESSENCE” brand of panty hose
would, upon encountering the mark “LADY ESSENCE” on body
shapers in the same area of the same store, be likely to
assume, mistakenly, as it would turn out to be in this case,
that the same commercial source was responsible for both
products.
The existence of the third-party registrations of other
marks which consist of or include the word “ESSENCE” does
not dictate a different result. The registrations do show
that the term has a suggestive meaning in connection with
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some products, and the dictionary definitions made of record
by both the Examining Attorney and the applicant shed light
on what that meaning is. With respect to these items of
apparel, which presumably are not scented or perfumed, the
word connotes that the goods possess “the intrinsic or
indispensable properties that serve to characterize or
identify (them).” (The American Heritage Dictionary, Second
Edition, submitted by the Examining Attorney with her
brief). The term suggests that the item of apparel with
which it is used is the essence or distillation of the
characteristics of such a product. The point here is not
what suggestive connotation the word has, however, but
rather that the suggestive connotation of the word is the
same with respect to both panty hose and body shapers. It
is that very close similarity of the connotations of these
marks in connection with these related products, as well as
the similarities in sound and appearance, that lead us to
the conclusion that confusion is likely.
Accordingly, the refusal to register based on Section
2(d) of the Act is affirmed as to the registration of
“ESSENCE” for panty hose. In view of this finding, we need
not resolve the issue of whether confusion is likely with
regard to the mark registered for t-shirts, and we decline
to do so. Because confusion is likely with respect to the
Ser No. 75/020313
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mark registered for panty hose, registration to applicant is
refused.
R. L. Simms
R. F. Cissel
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial & Appeal Board

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