Federated Department Stores, Inc.v.Wonduck America, Inc.

Trademark Trial and Appeal Board

Jan 10, 2001

No. 91110230 (T.T.A.B. Jan. 10, 2001)

1/10/01 Paper No. 25
CEW
UNITED ST
Trad
Feder
to
Daniel Ebenstein a
Ebenstein for oppo
Steven D. Kim, Esq
Before Cissel, Wal
Judges.
Opinion by Walters
Federated Dep
to the application
mark B LINE in the
apparel, namely, j
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.ATES PATENT AND TRADEMARK OFFICE
_______
emark Trial and Appeal Board
_______
ated Department Stores, Inc.
v.
Wonduck America, Inc.
_______
Opposition No. 110,230
Application No. 75/303,514
filed on June 5, 1997
_______
nd Beth Kotran of Amster, Rothstein &
ser.
. for applicant.
_______
ters and Wendel, Administrative Trademark
, Administrative Trademark Judge:
artment Stores, Inc. filed its opposition
of Wonduck America, Inc. to register the
stylized form shown below for “wearing
ackets, pants, skirts, and wearing
Opposition No. 110,230
2
accessories, namely gloves, scarves” in International Class
25.1
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used mark B-LINE for women’s
hosiery2 as to be likely to cause confusion under Section
2(d) of the Trademark Act.
Applicant, in its answer, denied the salient
allegations of the Notice of Opposition.3

1 Application Serial No. 75/303,514, filed June 5, 1997, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.
2 While opposer pleaded numerous registered marks and included, with its
Notice of Opposition, photocopies of these registrations, it did not
submit certified copies of these registrations or otherwise establish
the existence of these registrations through testimony. Thus, the
pleaded registrations are not considered to be of record in this case
and we have not considered them in making our decision.
3 Applicant asserted as an affirmative defense that opposer has
abandoned its B-LINE mark. Applicant presented no evidence regarding
this allegation and did not otherwise pursue this defense, therefore we
consider it to have been waived. Further, the evidence establishes that
opposer has substantially and continuously used its B-LINE mark since
its first use.
Opposition No. 110,230
3
The Record
The record consists of the pleadings; the file of the
involved application; the testimony deposition by opposer of
Francine Klein, opposer’s senior vice president, general
merchandising manager, women’s accessories, shoes and
intimate apparel, and of Stephanie Zernik, opposer’s
operating vice president, divisional merchandise manager,
men’s sports furnishing, both with accompanying exhibits;
and the testimony deposition by applicant of Sang Hyo Han,
applicant’s president and owner, with accompanying exhibits.
Only opposer filed a brief on the case. An oral hearing was
not requested.
The Parties
The department store Bloomingdale’s is a division of
opposer. Bloomingdale’s consists of 23 stores in various
locations around the United States, including the New York
City metropolitan area. Bloomingdale’s has a substantial
private label business including B-LINE, which is its
private brand of women’s hosiery. This product is sold in
all of, and only in, the Bloomingdale’s stores. The
evidence establishes that Bloomingdale’s has used the mark
B-LINE on women’s hosiery continuously since at least 1975,
when opposer’s witness, Ms. Klein, began her tenure at
Bloomingdale’s.
Opposition No. 110,230
4
Bloomingdale’s advertises its B-LINE hosiery widely
through direct mail, catalogs, newspapers and at least one
television ad. The general public purchases Bloomingdale’s
B-LINE hosiery, although its advertising generally aims at a
slightly up-scale purchaser. Bloomingdale’s sales of its B-
LINE hosiery totaled $118,600 in 1996, and $29,400 in 1997.
Opposer’s witness, Ms. Zernik, stated that competing brands
of hosiery include DKNY, Calvin Klein, and other retailers’
private brands. Ms. Zernik also testified that
Bloomingdale’s has another hosiery line identified by the
trademark B-LUXE; that there is a section of, at least, its
New York store known as B-WAY; and that Bloomingdale’s uses
the letter B as a preface to a number of its marks.4
Applicant’s business, since June 1986, is the importing
and wholesaling of men’s apparel. This application is based
upon a bona fide intention to use the B LINE mark in
commerce on the identified goods. However, applicant’s
president testified that applicant has used the mark since
January 1998 on men’s leather jackets sold to small
retailers in the New York metropolitan area.

4 There is no further evidence in the record regarding other marks that
may be owned by opposer. Because we have no evidence about the nature
of the purported marks, the goods upon which the marks may have been
used, dates of use, or nature and extent of use, this testimony is of
little value.
Opposition No. 110,230
5
Analysis
Although there are no certified copies of any of
opposer’s pleaded registrations in the record, opposer’s
testimony adequately establishes its priority of use of the
mark B-LINE on women’s hosiery. Thus, there remains no
issue with respect to priority.
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). 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.
Considering, first, the marks, opposer’s evidence of
advertising in newspapers and on hosiery packaging shows its
use of the mark B-LINE in relatively normal print with no
integrated design element, such that the commercial
impression of the mark is merely the word B-LINE.
Applicant’s mark is very similar thereto. The lack of an
Opposition No. 110,230
6
dash between the “B” and “LINE” in applicant’s mark is of
minimal consequence. The rectangle around the wording is
merely a carrier for the word; and the print used is non-
distinctive. Thus, the overall commercial impression of
applicant’s mark is the word B LINE. We find that the
parties’ marks have the same sound and meaning and nearly
the same appearance. The commercial impressions of the
parties’ marks are substantially similar, if not identical.
It is well established that when the marks at issue are
the same or nearly so, the goods in question do not have to
be identical to find that confusion is likely. As we stated
in In re Concordia International Forwarding Corp., 222 USPQ
352, 356 (TTAB 1983), “… the greater the degree of
similarity in the marks, the lesser the degree of similarity
that is required of the products or services on which they
are being used in order to support a holding of likelihood
of confusion.” It is sufficient that the goods are related
in some manner and that their character or the circumstances
surrounding their marketing are such that they are likely to
be encountered by the same people in situations that would
give rise to the mistaken belief that the producer was the
same. In re International Telephone and Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
Applicant’s wearing apparel and accessories, as broadly
identified in the application, encompass items for men,
Opposition No. 110,230
7
women and children. Applicant’s goods are hosiery for
women. The evidence establishes that manufacturers, such as
DKNY and Calvin Klein, who make women’s apparel and
accessories, including the items identified in the
application, also offer women’s hosiery under the same
marks. It is likely that consumers have been exposed to
apparel and accessories from the same source and offered
under the same mark. Thus, we conclude that the goods of
the parties are sufficiently related that, when identified
by substantially similar marks, confusion as to source or
sponsorship is likely.
Despite applicant’s testimony regarding the fact that
it sells its leather jackets under the mark only to small
retailers, 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 of the types 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’ products are
the same – i.e., both parties’ items of apparel are likely
to be sold to general consumers through, at least, both
department stores and small retail establishments.
Opposition No. 110,230
8
Therefore, we conclude that in view of the substantial
similarity, if not identity, in the commercial impressions
of applicant’s mark, B LINE in stylized form, and
registrant’s mark, B-LINE, their contemporaneous use on the
goods involved in this case is likely to cause confusion as
to the source or sponsorship of such goods.
Decision: The opposition is sustained.