Dooney & Burke, Inc.v.La Vani, Inc.

Trademark Trial and Appeal Board

Sep 8, 2008

No. 91175950 (T.T.A.B. Sep. 8, 2008)

Mailed: September 8, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Dooney & Bourke, Inc.
v.
La Vani, Inc.
_______

Opposition No. 91175950
to Application No. 76584390
filed on April 1, 2004
_______

Robert Laplaca of Levett Rockwood for Dooney & Bourke, Inc.

Susan B. Flohr of Blank Rome for La Vani, Inc.
_______

Before Quinn, Walters and Grendel, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Dooney & Bourke, Inc. filed its opposition to the
application of La Vani, Inc. to register the mark shown
below for “leather and imitations of leather articles,
namely, trunks and traveling bags, brief cases, back packs,
hand bags, shopping bags, wallets, purses, key case and key
chains,” in International Class 18.1

1 Application Serial No. 76584390, filed April 1, 2004, alleging dates
of first use and first use in commerce as of August 2003.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91175950
2

As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods so
resembles opposer’s previously used and registered mark
shown below as to be likely to cause confusion, under
Section 2(d) of the Trademark Act.
Registration No. 2771012 [registered October 7, 2003, with a
claim of acquired distinctiveness under Section 2(f)]

Mark:

Goods:
• “eyeglass cases, camera cases, binocular cases, mobile
phone holsters, compact disc cases,” in International
Class 9;
• “personal organizers, checkbook wallets, checkbook
covers, checkbook holders,” in International Class16;
and
• “wallets, purses, coin purses, clutches, handbags,
shoulder bags, shoulder straps, tote bags, backpacks,
luggage, suitcases, trunks, empty cosmetics cases,
leather key cases, leather key fobs, fanny packs,” in
International Class 18.

Applicant, in its answer, denied the salient
allegations of the claim.
The record consists of the pleadings; the file of the
involved application; certified status and title copies of
Registration Nos. 2771012 and 3000026; and a copy of a
Opposition No. 91175950
3
response to an Office action with an affidavit of Carolyn
Donahue from the file of Registration No. 2771012, excerpts
from various publications, and copies of foreign
registration certificates owned by opposer, all made of
record by opposer’s notice of reliance. Only opposer filed
a brief on the case.
Opposer’s Registration No. 3000026 was not pleaded in
its notice of opposition and, thus, has been given no
consideration. The foreign registration certificates, while
properly of record, are of no probative value. Opposer did
not obtain from applicant a stipulation to the submission of
testimony by affidavit, but opposer submitted the affidavit
of its employee. This is not the appropriate means for
submission of testimony in an inter partes proceeding and,
thus, this affidavit has not been considered. See Trademark
Rule 2.123, 37 CFR §2.123.
Because opposer has properly made its pleaded
registration of record, we find that opposer has established
its standing to oppose registration of applicant’s mark.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Moreover, because opposer’s pleaded registration is of
record, Section 2(d) priority is not an issue in this case
as to the mark and goods covered by said registration. See
Opposition No. 91175950
4
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Our determination of likelihood of confusion under
Section 2(d) must be 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. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
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). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein.
With respect to the goods of the parties, we observe
that there is a substantial overlap in the goods identified
in the application and in the pleaded registration. Both
parties’ identifications of goods include the identically-
Opposition No. 91175950
5
worded “trunks,” “hand bags” and “key cases.” Applicant’s
“traveling bags” encompass opposer’s “luggage” and
“suitcases.” Thus, it is unnecessary to consider whether or
to what extent the remaining goods are overlapping or
related. This du Pont factor weighs strongly in opposer’s
favor.
Further, both opposer’s and applicant’s identifications
of goods are broadly worded, without any limitations as to
channels of trade or classes of purchasers. We must presume
that the goods of applicant and opposer are sold in all of
the normal channels of trade to all of the usual purchasers
for goods and services of the type identified. See Canadian
Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987). In other words, we conclude that the
channels of trade and class of purchasers of the parties’
identical and overlapping goods are the same. These factors
also weigh in opposer’s favor.
Turning to the marks, we note that while we must base
our determination on a comparison of the marks in their
entireties, we are guided, equally, by the well established
principle that, in articulating reasons for reaching a
conclusion on the issue of confusion, “there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of
Opposition No. 91175950
6
the marks in their entireties.” In re National Data Corp.,
732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Both marks consist of two interlocking letters, with a
“D” as the first letter and the second letter appearing
interlocked, below and to the right of the “D.” Further,
the second “D” in opposer’s mark and the “B” in applicant’s
mark both consist of a straight stroke on the left and
either one or two similarly curved lines to the right. 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
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). We
conclude that the overall commercial impressions of these
two marks is substantially similar. Thus, this factor also
weighs in opposer’s favor.
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 same
and overlapping goods involved in this case is likely to
Opposition No. 91175950
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cause confusion as to the source or sponsorship of such
goods.
Decision: The opposition is sustained.