Carinhoso Globo B.V.

Trademark Trial and Appeal Board

Feb 28, 2001

No. 75424744 (T.T.A.B. Feb. 28, 2001)

2/28/01
Paper No. 15
TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Carinhoso Globo B.V.
________
Serial No. 75/424,744
_______
Guy D. Yale of Alix, Yale & Ristas, LLP for Carinhoso Globo B.V.
Jeri J. Fickes, Trademark Examining Attorney, Law Office 108
(Dave Shallant, Managing Attorney).
_______
Before Hanak, Holtzman and Rogers, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Carinhoso Globo B.V. has appealed from the final refusal of
the Trademark Examining Attorney to register the typed mark OPPUS
for goods which were subsequently amended to "shoes and boots for
daily wear."1
1 Application Serial No. 75/424,744, filed January 28, 1998, based upon
a foreign registration under Section 44(e) of the Trademark Act and
alleging a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/424,744
2
The Examining Attorney has refused registration under
Section 2(d) of the Trademark Act on the basis of Registration
No. 2,172,883 for the mark shown below for "neckties":2
When the refusal was made final, applicant appealed. Briefs
have been filed, but an oral hearing was not requested.
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand, including the
similarity of the marks and the relatedness of the goods or
services. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
2 Issued July 14, 1998. We additionally note that previously-cited
Registration No. 1,687,924 was cancelled by the Office on November 24,
1998. The Examining Attorney withdrew the refusal based on this
registration on March 8, 2000.
Ser No. 75/424,744
3
differences in the essential characteristics of the goods and
differences in the marks.").
With that in mind, we turn our attention to the marks. The
Examining Attorney argues in this regard that applicant's mark
OPPUS and the "dominant literal element" of registrant's mark,
i.e., OPUS are similar in sound and commercial impression. The
Examining Attorney maintains that the design in registrant's
mark, regardless of its characterization as an opossum or another
animal, "does not obviate [the] likelihood of confusion."
Applicant, on the other hand, argues that the marks are
different in sound, appearance and commercial impression, and
that the Examining Attorney, in deciding otherwise, has not
considered the marks in their entireties. Applicant contends
that it is the highly distinctive "opossum" design which creates
the strongest impression in registrant's mark and that the word
OPUS is a shortened reference to that animal.
While marks must be compared in their entireties, one
feature of a mark may have more significance than another, and in
such a case there is nothing improper in giving greater weight to
the dominant feature. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). We agree with the Examining
Attorney that the term OPPUS in applicant’s mark and word OPUS,
the strongest literal portion of registrant’s mark, are similar
in sound. The word ORIGINAL, being laudatory in nature, would
Ser No. 75/424,744
4
not be particularly significant to consumers as an indication of
source. However, the marks are radically different in
appearance, and we believe that the Examining Attorney has given
insufficient weight to the design element in registrant's mark
and its effect on the connotation of registrant's mark. We find
that when we compare the marks in their entireties, giving
appropriate weight to that feature of registrant's mark, the
marks are radically different in appearance and connotation, thus
they create different commercial impressions.
The visual differences in the marks are obvious.
Applicant’s mark is solely the typed word OPPUS. Registrant’s
mark, on the other hand, is a composite consisting of the words
OPUS ORIGINAL integrated within the design of what appears to be
a furry animal, perhaps in the nature of a cat, or in applicant’s
view, an opossum. Whatever the nature of the animal, both the
words and the design in registrant's mark must be considered in
determining the overall meaning and commercial impression the
mark conveys.
The word "opus" has the dictionary meaning of a "work,"
usually of a musical, literary or artistic nature.3 Consumers
who are familiar with this meaning will probably ascribe that
same meaning to applicant's mark OPPUS, as simply a misspelling
3 See, e.g., Websters Encyclopedic Unabridged Dictionary of the English
Language (1996), of which we have taken judicial notice.
Ser No. 75/424,744
5
of the dictionary word "opus." Those who are not familiar with
the dictionary meaning of "opus" would probably assume OPPUS is a
coined or invented term with no known meaning. Either way, the
use of OPUS in the context of registrant's mark suggests
something entirely different. Purchasers, upon viewing OPUS
ORIGINAL in registrant's design, are likely to believe that OPUS
identifies either a totally whimsical creature called "an opus,"
thereby conveying the fanciful impression that registrant's
neckties are an original creation of this "opus" creature, or a
character name for the animal, such as Opus Opossum or Opus the
Cat. Regardless of which impression is conveyed, it differs from
the commercial impression engendered by applicant's mark.4
In view of these differences in the marks, the question is
whether neckties and shoes are so closely related that use of the
respective marks on those goods would nonetheless, be likely to
cause confusion. The Examining Attorney argues that applicant's
4 The Examining Attorney's statement regarding the scope of protection
accorded a typed mark is incorrect. A typed drawing allows protection
for all reasonable manners of presentation. See Phillips Petroleum Co.
v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971) and INB
National Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992).
This is so because rights in the typed word reside in the word itself
not in any particular display of the term. Thus, rights in the term
would not be extended to include protection for that word combined with
other matter such as a design element or additional wording. See
Fossil Inc. v. Fossil Group, 49 USPQ2d 1451 (TTAB 1998) and In re
Pollio Dairy Products Corp., Inc., 8 USPQ2d 2012 (TTAB 1988).
Consequently, it would not be reasonable to assume that applicant's
mark OPPUS would be presented with the design element appearing in
registrant's mark.
Ser No. 75/424,744
6
shoes and boots and registrant's neckties are both apparel items
which are purchased by the same consumers within the same
department stores or boutiques. In support of her position that
the goods are related, the Examining Attorney has relied on three
third-party applications and three third-party registrations, two
of which are based on foreign registrations, covering both types
of goods under the same mark.
Applicant, on the other hand, maintains that while shoes and
boots and neckties "are often worn together and may be found in
the same channels of trade" these goods are not necessarily
related. Applicant argues that the goods are "dissimilar" in
that applicant's goods are made of leather and rugged materials,
while neckties are "soft goods" made of fabrics such as silk.
There is obviously some relationship between shoes and
neckties. They are complementary articles of everyday men's
apparel which are purchased and worn together (in fact ties would
probably never be worn without shoes) and which are sold in the
same channels of trade to the same classes of customers.
However, the degree of relatedness between these products is not
clear on this record. While third-party registrations are not
evidence of use, they may be used to show that the respective
goods are of a type which may emanate from the same source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Here, however, the third-party registrations and applications are
Ser No. 75/424,744
7
not helpful in this determination. Two of the three identified
registrations issued on the basis of foreign registrations rather
than on use in commerce and the three pending applications are
not evidence of anything. See, e.g., In re Albert Trostel & Sons
Co., supra. We cannot conclude on the basis of one third-party
registration that shoes and neckties are so closely related that
purchasers would naturally expect these two products to emanate
from the same source.
Considering the differences in the marks, and the
differences in the goods, and the fact that the goods are, at
most, only somewhat related, we find that there is no likelihood
of confusion.
Decision: The refusal to register is reversed.