Creative Wraps, Inc.

Trademark Trial and Appeal Board

Jun 26, 2001

No. 75696887 (T.T.A.B. Jun. 26, 2001)

06/26/01
Paper No. 9
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Creative Wraps, Inc.
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Serial No. 75/696,887
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Norman E. Lehrer for Creative Wraps, Inc.
Elliot S.A. Robinson III, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
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Before Quinn, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Creative Wraps, Inc. has filed an application to
register the mark RAYA SUN for “clothing, namely, girls and
ladies shorts, tops, dresses and bathing suits.”1
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the mark RAY SUN and design, as depicted
1 Serial No. 75,696,887, filed May 3, 1999, claiming a first use
date and first use in commerce date of January 25, 1999.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/696,887
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below, which is registered for “clothing, namely, vests,
sweaters, jeans, pants, coats, visors, hats, caps and
aprons; sportswear and activewear, namely, T-shirts,
shorts, jackets, swimsuits, sweatshirts, sweatpants, tennis
wear and shoes.”2
The refusal has been appealed and both applicant and
the Examining Attorney have filed briefs. No oral hearing
was requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont3 factors which are
relevant in view of the evidence of record. Two key
considerations in any analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods or services with which the marks
are being used. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In re
2 Registration No. 1,639,142, issued March 26, 1991; Section 8
affidavit accepted. The drawing is lined for the color red.
3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/696,887
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Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999).
Looking first to the goods involved here, we find that
not only are the goods all items of wearing apparel, as
noted by the Examining Attorney, but also there is a
definite overlap in the actual items of applicant and
registrant. Both include the identical items shorts and
bathing suits as well as the closely related items tops and
T-shirts. The registration is unrestricted and thus would
encompass both girls and ladies items of these types.
Applicant has raised no argument that the goods are
other than closely related. Thus, for purposes of
comparison under Section 2(d) we consider the goods
involved to be partially identical, and otherwise closely
related wearing apparel items.
Furthermore, because there are no restrictions in the
application or registration as to the channels of trade,
the goods of each must be assumed to travel in all the
normal channels of trade. See Kangol Ltd. v. KangaROOS
U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992).
Thus, we assume both applicant’s and registrant’s wearing
apparel would travel in all the normal channels of travel
for these goods and, as a result, would be available to the
same purchasers in the same retail outlets.
Ser No. 75/696,887
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It is well accepted that the greater the degree of
similarity of the goods, the lesser the degree of
similarity in the marks which is necessary to conclude that
there will be a likelihood of confusion. See Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992). Turning to the marks
involved here, we are guided by the well established
principle that although the marks must be considered in
their entireties, there is nothing improper, under
appropriate circumstances, in giving more or less weight to
a particular portion of a mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). In
particular, it is the word portion of a mark, rather than
the design element, unless particularly distinctive, that
is more likely to be remembered and relied upon by
purchasers in referring to the goods and thus it is the
word portion that will be accorded more weight in
determining the similarity of the marks. See Ceccato v.
Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d
1192 (TTAB 1994); In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987).
Applying these general principles, we are in
agreement with the Examining Attorney that it is the
literal portion of registrant’s mark, RAY SUN, which is the
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dominant portion and, as such, is substantially the same in
appearance, sound and connotation as applicant’s mark RAYA
SUN. While applicant argues that registrant’s mark is
primarily the word RAY with the word SUN being in such
fanciful lettering that it does not immediately convey to
purchasers the word SUN, we are convinced that when seen in
the red lettering for which the mark is lined, the presence
of the word SUN would be obvious. Moreover, we think this
is a case wherein a major function of the design element in
registrant’s mark, particularly, the rays emanating from
the word sun, would be to reinforce the impression of the
RAY coming from the SUN, in other words, being a RAY of the
SUN. See Ceccato v. Manifatture Lane Gaetano Marzotto &
Figli S.p.A., supra (coat of arms design reinforces meaning
of word mark). As such, the commercial impression created
by registrant’s mark is highly similar to that of
applicant’s mark RAYA SUN.
Furthermore, since applicant is seeking to register
its mark in a typed drawing, applicant is free to adopt any
format it desires to display its mark, including a design
very similar to that of registrant. See Squirto v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983); INB
National Bank v. Metrohost Inc., 22 USPQ2d 1585 (TTAB
1992). In attempting to visualize possible forms of
Ser No. 75/696,887
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applicant’s mark, we can certainly look to the specimens of
record which show presentation by applicant of the word SUN
in red lettering, although not in the design format of
registrant’s mark. See Phillips Petroleum Co. v. C. J.
Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971). All in
all, the design features of registrant’s mark cannot be
relied upon to obviate the similarity of overall commercial
impressions created by the marks.
Accordingly, on the basis of the close relationship of
the clothing items of applicant and registrant, the common
trade channels and purchasers for these goods, and the
similarity of overall commercial impressions created by
applicant’s and registrant’s mark, we find confusion likely
with the contemporaneous use of the respective marks for
the recited goods.
Decision: The refusal to register under Section 2(d)
is affirmed.
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