FALC S.p.A.v.H. H. Brown Shoe Co., Inc.

Trademark Trial and Appeal Board

Sep 20, 2000

No. 91107431 (T.T.A.B. Sep. 20, 2000)

Oral Hearing:
April 11, 2000
Paper No. 28
CEW
9/20/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
FALC S.p.A.
v.
H. H. Brown Shoe Company, Inc.
_______
Opposition No. 107,431
to Application No. 75/265,213
filed on March 27, 1997
_______
Robert J. Patch and Eric Jensen of Young & Thompson for
opposer.
Timothy A. French and Cynthia E. Johnson of Fish &
Richardson for applicant.
_______
Before Quinn, Walters and Rogers, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
FALC S.p.A. filed its opposition to the application of
H. H. Brown Shoe Company, Inc. to register the stylized
mark NATUR, shown below, for “footwear” in International
Class 25.1

1 Application Serial No. 75/265,213, filed March 27, 1997, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 107,431
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 stylized
mark NATURINO, shown below, for “clothing, namely,
trousers, pants, dungarees, sports-jackets, polo-neck
sweaters, T-shirts, shirts, blouses, socks, hats and gym-
suits; footwear, namely, shoes, boots and slippers”2 as to
be likely to cause confusion, under Section 2(d) of the
Trademark Act.

2 Registration No. 2,117,472, issued December 2, 1997, in International
Class 25, from application Serial No. 75/111,067, filed May 28, 1996,
alleging ownership of a subsisting registration in Italy. The notice
of opposition pleads ownership of the then-pending application, which
matured to registration during the pendency of this opposition. We
deem the notice of opposition amended to assert Registration No.
2,117,472, a certified status and title copy of which is of record.
Opposition No. 107,431
3
Applicant, in its answer, denied the salient
allegations of the claim.
The Record
The record consists of the pleadings; the file of the
involved application; a certified status and title copy of
Registration No. 2,117,472; certified status and title
copies of registrations owned by third parties,3 made of
record by applicant’s notice of reliance; the testimony
deposition by applicant of Thomas Eldon McClaskie,
president of H. H. Brown International & Born, with
accompanying exhibits; and the testimony deposition upon
written questions by opposer of Maurizio Carradori,
opposer’s administrative manager, with accompanying

3 There is no specific evidence in the record establishing the nature of
the relationship between applicant, H. H. Brown International & Born,
the company for whom Mr. McClaskie is president, and The Brown Group,
Inc., owner of the NATURALIZER and NATURE SOLE registrations made of
record by applicant. We conclude, however, from Mr. McClaskie’s
testimony that the companies are related in some manner.
Opposition No. 107,431
4
exhibits. Both parties filed briefs on the case and an
oral hearing was held.
The Parties
Mr. Carradori testified that opposer manufactures
footwear that has been sold in the United States since
1994; that less than 1.5% of its footwear sales in the
United States have been of shoes for children up to eleven
years old4; and that “INO” is a suffix in the Italian
language that means “small.”5
Mr. McClaskie testified that applicant and its related
companies manufacture shoes sold under various brands,
including NATURALIZER, NATURALSPORT and VIA NATURE. Mr.
McClaskie stated that its NATUR shoes were first shown at a
trade show in New York in December 1997; and that applicant
planned “a full roll out” of the NATUR brand shoe in the
summer of 1999. Mr. McClaskie stated that the sun and moon
design element of applicant’s mark, appearing over the “U”
are intended to indicate a German umlaut, and that NATUR is

4 Opposer asserts in its brief that the vast majority of its footwear is
for children up to eleven years old. However, the evidence of record,
namely, Mr. Carradori’s testimony, establishes exactly the opposite.
Opposer’s exhibits to Mr. Carradori’s testimony include six invoices
written in English for children’s shoes. The remaining exhibits are
all in the Italian language and are of no probative value.
5 Opposer supports Mr. Carradori’s stated definition of “INO” with an
excerpt from an Italian dictionary; however, no English translation of
the excerpt has been made of record. Therefore, the excerpt is of no
probative value.
Opposition No. 107,431
5
“German nomenclature for ‘natural.’”6 Mr. McClaskie stated
that he attends numerous trade shows each year on behalf of
applicant, and that he is not familiar with opposer or its
NATURINO shoes.
Analysis
Inasmuch as a certified copy of opposer’s registration
is of record, there is no issue with respect to opposer’s
priority. King Candy Co., Inc. 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). Key considerations in this case are the
similarities between the marks, the similarities between
the goods, the channels of trade, and the class of
purchasers. 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.

6 This statement regarding the German meaning of the word NATUR is
entitled to little probative value, as applicant has neither
established the extent of Mr. McClaskie’s knowledge of the German
language nor made of record an excerpt from a German/English
dictionary.
Opposition No. 107,431
6
Considering, first, the goods, it is clear that while
opposer’s footwear is limited to shoes, boots, and
slippers, applicant’s broadly identified footwear
encompasses opposer’s specified footwear. Thus, these
goods are legally identical.
Although opposer and applicant trade arguments about
whether opposer’s shoes are primarily children’s shoes, or
whether one party’s shoes are superior in quality, we note
that the identifications of goods contain no such
limitations. “The question of likelihood of confusion must
be determined based on an analysis of the mark as applied
to the goods and/or services recited in applicant’s
application vis-à-vis the goods and/or services recited in
[the] registration, rather than what the evidence shows the
goods and/or services to be.” Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed.
Cir. 1987). See 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). Both parties’ goods are
broadly worded and must be presumed to include the
Opposition No. 107,431
7
identified footwear for all ages and in all styles and
qualities.7
Moreover, neither opposer’s nor applicant’s
identification of goods contains 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 of the type identified. See Canadian
Imperial Bank v. Wells Fargo, supra. In other words, we
conclude that the channels of trade and class of purchasers
of the parties’ goods are the same.
Turning to the marks, we note that “when marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
Opposer contends that applicant’s mark is identical to
the first two syllables of opposer’s mark, and that it is
this portion of both marks that is likely to be impressed
upon the purchaser and remembered. Opposer contends,
further, that the “INO” suffix of opposer’s mark means

7 In view of the identity of the parties’ footwear, it is not necessary
to consider what relationship, if any, opposer’s identified clothing
products may have to applicant’s goods.
Opposition No. 107,431
8
“small” and, thus, purchasers will believe that opposer’s
mark identifies small versions of the NATUR shoes, or
children’s shoes. Opposer argues that both marks have a
European appearance and sound.
Applicant contends that the parties’ marks are
substantially different in appearance, sound, connotation
and commercial impression, placing emphasis on the design
elements and the differences in the word portions.
Applicant argues that both NATUR and NATURINO “suggest or
connote the shoes are ‘Natural’ or have comfortable
properties akin to those found in ‘Nature’”; and that there
are “a myriad of other marks for footwear incorporating the
term ‘Natur-.’” Of the third-party registrations submitted
by applicant, two registrations for the marks,
respectively, NATURALIZER and NATURE SOLE for footwear are
owned by applicant’s purportedly related company, The Brown
Group, Inc. Only five of the other third-party
registrations are for footwear. These registrations are
for the marks NATUREWALK, NATUREVELDT, NATURE-HIDE
(stylized), NATURAL TREAD, and NATURE COLLECTION.
Considering the marks, 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
Opposition No. 107,431
9
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 the marks in their entireties.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
In this case, both opposer’s and applicant’s marks
contain design elements that are quite minor relative to
the word in each mark. Notwithstanding Mr. McClaskie’s
statements regarding the significance of the “waves” across
the “A” and the “sun and moon” over the “U,” these design
elements are very small and serve principally as accent or
decoration for the word NATUR. Similarly, the “tail” above
the “A” in opposer’s mark is quite small in comparison to
the word NATURINO and the stylization of the lettering is
minimal. We conclude that the word portions of both
opposer’s and applicant’s marks are predominant. Such a
conclusion is further warranted in this case because the
word portion of a mark comprised of both a word and a
design is normally accorded greater weight because it would
be used by purchasers to request the goods. In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and
Opposition No. 107,431
10
Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461,
462 (TTAB 1985).
Considering the word portion of opposer’s mark,
NATURINO, the evidence of record does not support the
conclusion that “INO” would be understood by purchasers in
the United States as meaning “small.” Likewise, the
evidence does not support the conclusion that applicant’s
mark, NATUR, would be understood by purchasers as the
German word for “natural.” Rather, we find it likely that
purchasers would see both marks as variations of the
American-English words “nature” or “natural.” As such, we
conclude that the two marks, considered in their
entireties, are substantially similar in sound, appearance,
connotation and commercial impression.
We are not convinced otherwise by applicant’s argument
that “nature” and “natural” are highly suggestive in
connection with footwear. This contention is essentially
conjecture that is not supported by the record. With
respect to the five third-party registrations submitted in
support of this contention, third-party registrations by
themselves do not show that the marks are in actual use,
much less that the actual use has been so extensive that
consumers have become accustomed to distinguishing between
various NATUR- marks. See Smith Bros. Mfg. Co. v. Stone
Opposition No. 107,431
11
Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973)
[“But in the absence of evidence showing the extent of use
of any such marks . . . [the registrations] provide no
basis for saying the marks so registered have had, or may
have, any effect at all on the public mind so as to have a
bearing on likelihood of confusion.”]. Further, these
registrations for footwear are insufficient to establish
that NATUR- has a particular significance for those in the
footwear industry, or that the term has been adopted by
those in the field to convey that significance. See Mead
John & Company v. Peter Eckes, 197 USPQ 187 (TTAB 1977).
Moreover, even if we had concluded that NATUR- or
NATURINO is suggestive in connection with footwear,
suggestive marks are entitled to protection against
likelihood of confusion.
In conclusion, in view of the substantial similarity
in the commercial impressions of applicant’s stylized mark,
NATUR, and opposer’s stylized mark, NATURINO, their
contemporaneous use on the identical goods is likely to
cause confusion as to the source or sponsorship of such
goods. This is particularly true in view of the fact that,
due to the consuming public’s fallibility of memory, the
emphasis is on the likely recollection of the average
customer, who normally retains a general rather than a
Opposition No. 107,431
12
specific impression of trademarks or service marks. Spoons
Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735 (TTAB
1991), aff’d. No. 92-1086 (Fed. Cir. June 5, 1992); and In
re Steury Corporation, 189 USPQ 353 (TTAB 1975).
It is well established that one who adopts a mark
similar to the mark of another for the same or closely
related goods or services does so at his own peril, and any
doubt as to likelihood of confusion must be resolved
against the newcomer and in favor of the prior user or
registrant. See J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Nina
Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070,
12 USQP2d 1901 (Fed. Cir. 1989); In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed Cir. 1988);
and W.R. Grace & Co. v. Herbert J. Meyer Industries, Inc.,
190 USPQ 308 (TTAB 1976).
Opposition No. 107,431
13
Decision: The opposition is sustained.
T. J. Quinn
C. E. Walters
G. F. Rogers
Administrative Trademark Judges,
Trademark Trial and Appeal Board