Calzeus-Calcados, LDA.

Trademark Trial and Appeal Board

Jan 19, 2001

No. 75342379 (T.T.A.B. Jan. 19, 2001)

1/19/01 Paper No. 14
CEW
UNITED STAT
Tradem
In re
S
Kaushal R. Odedra of
Kathryn Waters-Perez
Office 110 (Chris A.
Before Hanak, Hohein
Judges.
Opinion by Walters,
Calzeus – Calca
application to regis
namely, leather shoe

1 Serial No. 75/342,379,
1997, based on use in co
first use in commerce re
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.ES PATENT AND TRADEMARK OFFICE
___________
ark Trial and Appeal Board
___________
Calzeus – Calcados, LDA.
___________
erial No. 75/342,379
___________
Wenderoth, Lind & Ponack for applicant.
, Trademark Examining Attorney, Law
F. Pedersen, Managing Attorney).
____________
and Walters, Administrative Trademark
Administrative Trademark Judge:
dos, LDA. has filed a trademark
ter the mark shown below for “footwear,
s, leather boots and leather sandals.”1
in International Class 25, filed August 18,
mmerce, alleging first use as of May 1995 and
gulable by Congress as of April 1997.
Serial No. 75/342,379
2
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark shown below, previously registered for
various articles of clothing,2 that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs,3 but an oral hearing
was not requested. We affirm the refusal to register.

2 Registration No. 1,997,417, issued August 27, 1996, to Sophir
International Co., Ltd., in International Class 25. The goods are
identified as “articles of clothing and knitted articles of clothing,
namely, underwear, undershirts, panties, lingerie, negligees, chemises,
foundation garments, brassieres, corsets, corselets, girdles, garter
belts, jerseys, sweaters, jumpers, cardigans, and sleepwear.”
3 Applicant submitted with its brief evidence regarding its sales; an
article about its success; and a photocopy of a British registration.
However, the record must be complete prior to appeal. Trademark Rule
2.142(d). In this case, applicant filed a request for reconsideration
with its notice of appeal, but did not include this evidence at that
stage, as would have been appropriate; and the Examining Attorney has
objected to the evidence as untimely. Because there is no question that
the evidence is untimely, we have not considered it. Even if we had
determined that this evidence was properly of record, it is of no
persuasive value. Registrability in Great Britain is of no relevance to
registrability in the U.S. Similarly, applicant’s reputation, sales and
use are of little consequence except to the extent that this information
Serial No. 75/342,379
3
Our determination under Section 2(d) is based on 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
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and
the cases cited therein.
We turn, first, to the marks. The Examining Attorney
contends that the dominant portion of each mark is the word
SWEAR; that the differences in the design elements of the
two marks are insufficient to distinguish the marks; and
that the word SWEAR is arbitrary in connection with each
party’s goods.
Applicant contends that the marks are dissimilar
because the design elements of each mark are integral to the
commercial impressions of the marks. Applicant argues that
the registered mark “contain[s] fanciful feminine styling

pertains to use in the U.S. and helps us understand the nature of the
goods as identified and normal channels of trade for such goods.
Serial No. 75/342,379
4
appropriate for female underwear/sleepwear/casual wear …
[and] a script letter S in a dark oval background
immediately followed by the word SWEAR also in similarly
feminine script lettering to give an elegant overall
impression”; and that applicant’s mark “is presented in an
aggressive razor edged lettering with a sharp arrow
bisecting the mark from top to bottom in a clockwise arched
motion thus giving a youthful/hip/urban impression.”
Applicant further argues that the third-party registration4
submitted by applicant comprises a “crowded field” of SWEAR
marks.
We find that applicant’s mark and the registered mark,
when viewed in their entireties, are substantially similar,
if not the same, in terms of sound and connotation, and
similar in terms of appearance and commercial impression.
The test 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 or services offered under the respective marks is
likely to result. The focus is on the recollection of the

4 Registration No. 2,274,822 for the mark “YOU’LL LOVE IT. WE SWEAR.”
for, inter alia, T-shirts and hats. Applicant also submitted a copy of
a pending application (Serial No. 75/641,043 for the mark THE PINKY
SWEAR CLUB for various clothing items). This application was abandoned
and is now the subject of a petition to revive. Regardless of whether
it remains abandoned or is revived, it is of no value in evaluating what
marks are coexisting on the Register.
Serial No. 75/342,379
5
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See, Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue must be considered
in their entireties, it is well settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
While both marks contain design elements, we find that
the word portion of each mark is predominant and, thus, the
marks are similar in appearance. The word portion of a mark
comprised of both a word and a design is normally accorded
greater weight because the words are likely to make an
impression upon purchasers that would be remembered by them
and would be used by purchasers to request the goods. In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987);
and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ
461, 462 (TTAB 1985). In registrant’s mark, the principal
design element is the “S” in an oval, which emphasizes the
initial letter of the word portion of the mark – SWEAR. In
applicant’s mark, the principle design element is the curved
arrow dissecting the mark, which, although arbitrary, we
find to be of lesser significance that the word SWEAR for
Serial No. 75/342,379
6
the reasons noted above. The style of print in which SWEAR
appears in each mark is relatively simple and does not
contribute significantly to the overall commercial
impression of either mark.
We find applicant’s discussion of the significance of
the design features of each mark to be pure conjecture.
Similarly, we do not find a “crowded field of swear marks.”
Certainly one other registration containing the word “swear”
does not render it a weak term in connection with clothing
and footwear. Further, the third-party registered mark
“YOU’LL LOVE IT. WE SWEAR.” creates an entirely different
commercial impression than either of the marks involved in
this case.
Clearly the identical word SWEAR in each mark is
subject to the same pronunciation and connotation – the
stylization of the words does not alter these factors. We
find the overall commercial impressions of the two marks to
be substantially similar.
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods recited in
applicant’s application vis-à-vis the goods recited in the
registration, rather than what the evidence shows the goods
actually are. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See
Serial No. 75/342,379
7
also, Octocom Systems, Inc. v. Houston Computer Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). Further, it is a general rule that 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 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 therewith, 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 each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited
therein.
The Examining Attorney contends that applicant’s
identified goods are within the natural field of expansion
for registrant; and that, based on third-party registrations
in the record, consumers are accustomed to seeing items of
clothing of the type listed in the registration and footwear
identified by the same marks and coming from the same
source. Applicant argues that this evidence does not
establish that the goods are “similar,” and that the six
registrations submitted by the Examining Attorney are
Serial No. 75/342,379
8
insufficient to establish that the goods are within
registrant’s “natural field of expansion.”
We find that we need not address what goods are “within
registrant’s natural field of expansion.” Rather, we are
convinced by the third-party registrations made of record by
applicant that consumers are accustomed to seeing various
clothing items, including items the same as registrant’s,
and leather footwear from the same source and identified by
the same trademarks. Thus, we find that applicant’s and
registrant’s goods are sufficiently related that, if
identified by confusingly similar marks, confusion as to
source or sponsorship is likely.
Finally, with regard to applicant’s assertion that it
is aware of no instances of actual confusion occurring as a
result of the contemporaneous use of the marks of applicant
and registrant, we note that, while a factor to be
considered, the absence or presence of actual confusion is
of little probative value where we have little evidence
pertaining to the nature and extent of the use by applicant
and registrant. Moreover, the test under Section 2(d) is
not actual confusion but likelihood of confusion. See, In
re Kangaroos U.S.A., 223 USPQ 1025, 1026-1027 (TTAB 1984);
and In re General Motors Corp., 23 USPQ2d 1465, 1470-1471
(TTAB 1992).
Serial No. 75/342,379
9
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s mark
and registrant’s mark, their contemporaneous use on the
goods involved in this case is likely to cause confusion as
to the source or sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.