Eco-Mills, LLC

Trademark Trial and Appeal Board

Sep 24, 2007

No. 78441505 (T.T.A.B. Sep. 24, 2007)

Decision Mailed:
September 24, 2007
GDH/CJH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Eco-Mills, LLC
________

Serial No. 78441505
_______

John Alumit of Patel and Alumit, P.C. for Eco-Mills, LLC.

Bernice Howse, Trademark Examining Attorney, Law Office 1061
(Mary Sparrow, Managing Attorney).
_______

Before Hohein, Zervas and Taylor, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Eco-Mills, LLC has filed an application to register the
mark "TAHOE SPORTSWEAR" on the Principal Register in standard
character form for "clothes, namely jackets, vests, pullovers,
robes, hats, gloves, and socks" in International Class 25.2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that

1 The application referenced above was originally examined by another
examining attorney.

2 Ser. No. 78441505, filed on June 25, 2004, which sets forth a date of
first use of the mark anywhere and in commerce of April 30, 2003. The
word "SPORTSWEAR" is disclaimed.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78441505
2
applicant's mark, when applied to its goods, so resembles the
mark "TAHOES" and design, as reproduced below,

which is registered on the Principal Register for "shoes for
men, women, and children" in International Class 25,3 as to be
likely to cause confusion, or to cause mistake, or to deceive.
Applicant has appealed and briefs have been filed.4 We
affirm the refusal to register.

3 Reg. No. 835,523, issued on September 19, 1967, which sets forth a
date of first use of such mark anywhere and in commerce of September
21, 1966; renewed.

4 Applicant submitted, for the first time with its appeal brief,
printouts of third-party registrations to show that "the word TAHOE is
entitled to only a narrow scope of protection because there are at
least eight third-party registrations that bear this mark in
connection with clothing in class 025," and asked that we take
judicial notice of the third-party registrations. (App. Br. at 6.)
The Examining Attorney has objected to this evidence as untimely under
Trademark Rule 2.142(d). The objection is proper and sustained. We
hasten to add, however, that even if such evidence were to be
considered, it would not be persuasive of a different result in this
case.

We also note applicant's argument, set forth on page 6 of its
brief under the heading "No Family of Marks Exist," that "[w]hile the
Examining Attorney may consider the fact that the Registrant has
applied for a second trademark bearing the common wording TAHOE,
Applicant submits that Registrant may not claim exclusive rights to
the word TAHOE based on only two marks." The record, however, does
not disclose that registrant owns any application, although a third
party's application for the mark "T TAHOE" and design for "footwear,"
which was cited as a potential bar to applicant's application, was
subsequently abandoned. Moreover, to the extent that applicant may be
contending that registrant may not claim exclusive rights to its mark
if it only has one registration for the mark, as opposed to a family
of marks, applicant is plainly incorrect. Section 7(b) of the
Trademark Act, 15 U.S.C. §1057(b), provides in relevant part that: "A
certificate of registration of a mark upon the principal register ...
shall be prima facie evidence of the registrant’s exclusive right to
use the registered mark in commerce on or in connection with the goods
... stated in the certificate."

Ser. No. 78441505
3
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods at issue and the similarity or
dissimilarity of the respective marks in their entireties.5
Turning first to consideration of the respective goods,
it is well settled that the goods at issue need not be identical
or directly competitive in order for there to be a likelihood of
confusion. It is sufficient, instead, that the goods at issue
are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be likely to
be encountered by the same persons under situations that would
give rise, because of the marks employed in connection therewith,
to the mistaken belief that they originate from or are in some
way associated with the same producer or provider. See, e.g., In
re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 156, 223 USPQ
1289, 1290 (Fed. Cir. 1984); Monsanto Co. v. Enviro-Chem Corp.,
199 USPQ 590, 595-96 (TTAB 1978); In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).

5 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."
192 USPQ at 29.

Ser. No. 78441505
4
Applicant does not dispute that the goods are related.
Indeed, applicant acknowledges that "both the Applicant's mark
and the cited mark relate to clothing." (App. Br. at 2.) In
addition, the record contains copies of numerous use-based third-
party registrations and web site printouts, submitted by the
Examining Attorney, which list or show clothing items of the
kinds set forth in applicant's identification of goods along with
those identified in registrant's registration, namely, shoes for
men, women and children. It is settled that use-based third-
party registrations have some probative value to the extent that
they serve to suggest that the various listed goods therein are
of a type which may emanate from a single source. See, e.g., In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6
(TTAB 1988), aff'd as not citable precedent, 864 F.2d 149 (Table,
unpublished) (Fed. Cir. 1988).
Moreover, we note that many prior CCPA and Board
decisions have found that confusion is likely when shoes and
items of clothing are sold under the same or substantially
similar marks.6 In view thereof, the evidence of record

6 See, e.g., General Shoe Corp. v. Lerner Bros. Mfg. Co., Inc., 254
F.2d 154, 117 USPQ 281, 283 (CCPA 1958) ["HOLIDAY" for men's outer
shirts versus "HOLIDAY" for men's boots and shoes]; In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) ["ESSENTIALS" for women's
pants, blouses, shorts and jackets versus "ESSENTIALS" for women's
shoes]; In re Apparel Ventures, Inc., 229 USPQ 225, 227 (TTAB 1986)
["SPARKS BY SASSAFRAS" for blouses, skirts and sweaters versus
"SPARKS" for shoes, boots and slippers]; In re Pix of America, Inc.,
225 USPQ 691, 692 (TTAB 1985) ["NEWPORT" for outer shirts versus
"NEWPORTS" for women's shoes]; In re Alfred Dunhill Ltd., 224 USPQ
501, 504 (TTAB 1984) ["DUNHILL" for men's hosiery v. "DUNHILL" for
shoes]; In re Kangaroos U.S.A., 223 USPQ 1025, 1026 (TTAB 1984)
["BOOMERANG" and design for men's shirts versus "BOOMERANG" for
athletic shoes]; In re Tender Tootsies Ltd., 185 USPQ 627, 629 (TTAB
Ser. No. 78441505
5
establishes that applicant's clothing items and registrant's
shoes are so related that the use of the same or substantially
similar marks in connection therewith is likely to cause
confusion as to the source or sponsorship thereof.
Turning, then, to consideration of the marks at issue,
our principal reviewing court has indicated that in articulating
reasons for reaching a conclusion on the issue of likelihood 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 [that] the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, according to the court,
"[t]hat a particular feature is descriptive or generic with
respect to the involved goods ... is one commonly accepted
rationale for giving less weight to a portion of a mark." Id.
The Examining Attorney contends that "[a]pplicant's
mark and the registrant's mark are similar because both share the
word 'Tahoe'"; and that applicant's "addition of [the] generic
wording 'sportswear' [does] not change the overall commercial
impression of the marks." (Ex. Atty. Br. at 3.) She further
states that greater weight is given to the dominant feature of a

1975) ["TENDER TOOTSIES" for women's and children's shoes and slippers
v. "TOOTSIE" for ladies' nylon hosiery]; B. Rich's Sons, Inc. v.
Frieda Originals, Inc., 176 USPQ 284, 285 (TTAB 1972) ["RICH'S CHEVY
CHASERS" for shoes versus "FRIEDA'S CHEVY CHASE ORIGINALS" for women's
knitwear, namely, dresses, suits, skirts and blouses]; and U.S. Shoe
Corp. v. Oxford Industries, Inc., 165 USPQ 86, 87 (TTAB 1970)
["COBBIES" for shoes versus "COBBIES BY COS COB" for women's and
girls' shirt-shifts].
Ser. No. 78441505
6
mark in determining likelihood of confusion, and that here, the
"dominant wording is the arbitrary term 'Tahoe.'" (Id. at 4.)
While applicant acknowledges, as it must, that both
marks contain the word "TAHOE" and that the term "SPORTSWEAR" in
its "TAHOE SPORTSWEAR" mark is "disclaimed as descriptive" (App.
Br. at 2-3), applicant asserts that "the Examining Attorney may
not diminish the contribution of the SPORTSWEAR portion when
comparing applicant’s mark to TAHOES." (Id. at 3.) In support
of its assertion, applicant relies on In re Hearst Corp., 982
F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992), which it characterizes
as having facts "nearly identical" to this case. We find that
Hearst, however, is distinguishable from the facts at hand and
does not control our determination in this case.
In Hearst, the mark VARGA GIRL for calendars was held
not to be confusingly similar to the mark VARGAS for, inter alia,
calendars. The court found that "the Board erred in its
diminution of the contribution of the word 'girl,'" which the
Board found to be merely descriptive, and that "[w]hen GIRL is
given fair weight, along with VARGA, confusion with VARGAS
becomes less likely." 25 USPQ2d at 1239. Contrary to
applicant’s assertions, in Hearst the applicant did not add a
disclaimed, highly descriptive, if not generic, term to the
registered mark, as applicant has essentially done here. Rather,
while the registered mark was VARGAS and the applicant’s mark was
VARGA GIRL, the word GIRL was not disclaimed and the court did
not view such word as merely descriptive. 25 USPQ2d at 1238-39.
Ser. No. 78441505
7
Moreover, the court in Hearst explicitly recognized
that the weight to be given terms in a mark is "not entirely free
of subjectivity" and provided examples to "illustrate the fact-
dependency of such determinations." 25 USPQ2d at 1239. The
court confirmed, in In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004), that the determination of
appropriate weight is highly fact-specific (affirming the Board's
decision that JOSE GASPAR GOLD for tequila was likely to cause
confusion with GASPAR'S ALE for beer and ale). As we noted
supra, the court has also recognized the fact "[t]hat a
particular feature is descriptive or generic with respect to the
involved goods ... is one commonly accepted rationale for giving
less weight to a portion of a mark." In re National Data Corp.,
supra. Accordingly, there is nothing improper in giving less
weight to the descriptive term "SPORTSWEAR" and more weight to
the term "TAHOE," as the dominant term in applicant's mark, when
consideration is given to the similarity of the marks in their
entireties.
Applicant's arguments that the presence of the term
"SPORTSWEAR" in its "TAHOE SPORTSWEAR" mark imbues its mark with
a "quite distinct and dissimilar" commercial impression from the
cited "TAHOES" and design mark are likewise unavailing. Despite
the fact that there are some specific differences in the marks,
overall they convey virtually the same commercial impression.
The additional word "SPORTSWEAR" in applicant's mark appears as
the second term in the mark and, as previously noted, is highly
descriptive, if not generic, of the clothing identified in the
Ser. No. 78441505
8
application. Accordingly, it is insufficient to distinguish
applicant's mark from that of the registrant. Rather, it is the
first and distinctive term "TAHOE" in applicant's mark that is
more likely to be impressed upon consumers. See, e.g., Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F. 3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) [noting the
presence of a strong distinctive term as the first word in both
parties' marks renders the marks similar, especially where an
additional term does not have source-identifying significance];
Presto Prods, Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) ["[I]t is often the first part of a mark which is
most likely to be impressed upon the mind of a purchaser and
remembered"].
Further, the fact that applicant's mark does not
contain stylization or a design element does not help applicant
inasmuch as its mark is in standard character form and thus is
not limited to display in any particular format. See, e.g.,
Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170
USPQ 35, 36 (CCPA 1971) [an application for registration of a
mark in typed or standard character form is not restricted to a
particular form of display thereof]; and In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991) ["[T]he display of a word mark may
be changed at any time at the whim of its owner; rights in such a
mark reside in the term itself rather than in any particular form
thereof"].
Applicant next asserts, relying on In re Electrolyte
Laboratories, Inc., 929 F.2d 645, 16 USPQ2d 1239 (Fed. Cir.
Ser. No. 78441505
9
1990), that the Examining Attorney "erred by focusing on the
dominant feature, TAHOE, to the substantial exclusion of the
stylized lettering and design feature of the cited mark." (App.
Br. at 5.) In response, the Examining Attorney states that (Ex.
Atty. Br. at 5):
Applicant concedes that the wording 'Tahoe'
is the dominant feature of the composite
mark. As such, if one feature of a mark is
more significant than another feature,
greater weight may be given to the dominant
feature for purposes of determining
likelihood of confusion. Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565,
218 USPQ 390 (Fed. Cir. 1983). When a mark
consists of a word portion and a design
portion, the word portion is more likely to
be impressed upon a purchaser's memory and to
be used in calling for the goods or services.
Therefore, the word portion is normally
accorded greater weight in determining
likelihood of confusion. In re Dakin's
Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB
1999); In re Appetito Provisions Co. [Inc.],
3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v.
Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP
§1207.01(c)(ii). Greater weight is
appropriately attributed to the dominant
wording. The registrant's stylized lettering
and design element do not change the overall
impression of the marks when compared under
Section 2(d).

We concur with the Examining Attorney, and we believe
that the Federal Circuit's decision in Electrolyte Laboratories
does not compel a different conclusion. In Electrolyte
Laboratories, the applicant's mark and the cited mark were both
stylized letter design marks containing the descriptive term K+,
the symbol for the potassium ion, and both marks were for dietary
potassium supplements. On those facts, the court found it was
improper to focus on the literal element to the substantial
exclusion of the stylization and design elements of the marks.
Ser. No. 78441505
10
16 USPQ2d at 1240. Unlike Electrolyte Laboratories, where the
common literal portions of the marks were descriptive and had
little if any source identifying significance, here the marks
share the distinctive term TAHOE. Further, nothing about the
stylization of the font or the design element on the letter "O"
in the registrant's mark appreciably slow notice or comprehension
of that term in the registered mark. Rather, it is clear that
the word "TAHOES," as the sole literal portion of the registered
mark, constitutes the prominent portion of that mark, especially
since it would typically be used by customers when calling for or
otherwise referring to registrant’s goods.7 Thus, there is
nothing improper in giving less weight to the design portion of
the registrant's mark in reaching our conclusion that the marks
in their entireties are substantially similar.
We accordingly conclude, after considering all the
relevant du Pont factors and all the relevant evidence of record,
that due to the shared distinctive term "TAHOE," customers and
prospective purchasers who are familiar or acquainted with
registrant's "TAHOES" and design mark for "shoes for men, women,
and children" would be likely to believe, upon encountering
applicant's substantially similar "TAHOE SPORTSWEAR" mark for
"clothes, namely jackets, vests, pullovers, robes, hats, gloves,
and socks," that such closely related goods emanate from, or are
sponsored by or associated with, the same source. In particular,

7 If a mark comprises both a word and a design, the word is normally
accorded greater weight because it would be used by purchasers to
request the goods or services. See, e.g., In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553, 1554; and In re Drug Research Reports, Inc.,
200 USPQ 554, 556 (TTAB 1978).
Ser. No. 78441505
11
consumers could reasonably believe that applicant’s "TAHOE
SPORTSWEAR" mark designates a new or expanded line of clothing
from the same source as the shoes marketed under registrant's
"TAHOES" mark.
Decision: The refusal under Section 2(d) is affirmed.