Fits Corporation K.K.

Trademark Trial and Appeal Board

Aug 24, 2005

No. 76501790 (T.T.A.B. Aug. 24, 2005)

Mailed:
24 August 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fits Corporation K.K.
________

Serial No. 76501790
_______

Marilyn Matthes Brogan of Frommer Lawrence & Haug LLP for
Fits Corporation K.K.

Brian J. Pino, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Bucher, Drost, and Kuhlke, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On March 21, 2003, Fits Corporation K.K. (applicant)
applied to register the mark LOVE PASSPORT in standard
character form on the Principal Register for “cosmetics;
toiletries, namely, perfumes, cologne, shower gel, body
milk, shampoo, [and] hair rinse”" in Class 3.1

1 Serial No. 76501790. The application is based on an intent to
use the mark in commerce as well as the ownership of Japanese
Registration No. 4662728.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76501790
2
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a prior registration for
the mark PASSPORT in standard character form for “perfume
and cologne" in Class 3.2 The examining attorney’s position
is that the goods are identical and highly related and that
“the wording LOVE does not distract from the more dominant
wording PASSPORT when considering the general commercial
impression of the respective marks.” Brief at 3.
Applicant maintains (Brief at 5) that:
[T]he composite “love passport” might inspire one to
think of a journey toward happiness, love or
fulfillment. This is different from the word
“passport” alone, which simply has a utilitarian
concept and meaning and would not generally be linked
together with the word “love,” as is the case in the
instant composition. Thus, the presence of the word
“love” in the instant mark creates a situation where
the marks in question do not have the same
connotation.

After the examining attorney made the refusal final,
applicant filed this appeal.
When there is a question of likelihood of confusion,
we analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.

2 Registration No. 2,279,592, issued September 21, 1999. At
present, a Section 8 affidavit has not been filed.
Ser No. 76501790
3
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he 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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We start by comparing the goods. In this case, the
goods in the application and registration are identical to
the extent that both identification of goods include
perfume and cologne. If the involved marks are used on
identical goods, there is a greater likelihood that when
similar marks are used in this situation, confusion would
be likely. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992) (“When marks would appear on virtually identical
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines”). In
addition, we must assume that identical goods travel
through the same channels of trade and that the potential
purchasers are the same. In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994).
Ser No. 76501790
4
Another important factor we consider is a comparison
of the marks as to the “similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation, and commercial impression.” Majestic
Distilling, 65 USPQ2d at 1203. It is well settled that it
is improper to dissect a mark and that marks must be viewed
in their entireties. In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1688 (Fed. Cir. 1993). However, “more or
less weight may be given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of
the marks in their entireties. Indeed, this type of
analysis appears to be unavoidable.” In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)
(footnotes omitted).
In this case, the marks are PASSPORT and LOVE
PASSPORT. Both marks are shown in typed or standard
character form so there is no difference in the style of
the marks. The marks are similar to the extent that they
contain the identical word PASSPORT and different because
applicant’s mark adds the word LOVE. While these marks are
not identical, their pronunciation and appearance would not
be dissimilar.
In addition, we look at the meaning and connotation of
the marks PASSPORT and LOVE PASSPORT. A “passport” is
Ser No. 76501790
5
defined as “an official document that identifies a person
as a citizen of a country and permits that person to travel
abroad” and “something that assures the achievement of
something else: Hard work is often a passport to success.”
The American Heritage Student Dictionary (1998).3 In the
marks, the term “passport” would likely have the same
meaning, i.e., “something that assures the achievement of
something else.” The “something else” in applicant’s case
is explicitly identified as “love.”
Also, the connotation of the marks is similar.
Applicant argues, without any evidentiary support, that
“‘love’ is such a strong and dominant word, even more
dominant serving as the first portion of the mark, that the
addition of this word does indeed create a different
impression from the word ‘passport’ alone.” Brief at 3.
However, “Perfume” is “a substance, extract, or preparation
for diffusing or imparting an agreeable or attractive
smell.” The Random House Dictionary of the English
Language (unabridged) (2d ed. 1987). Obviously, perfume as
an attractive scent can be used to appeal to members of the
opposite sex for the purpose of romance or love. The use

3 We take judicial notice of dictionary definitions. University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
Ser No. 76501790
6
of “Love” on such a product would hardly seem unusual.
Therefore, LOVE PASSPORT and PASSPORT, when used on perfume
and similar products, would have the same connotation
because both would suggest that the perfume is a passport
to love or romance. The term “Passport” would be the
dominant part of both marks because, in registrant’s mark,
it is the only term and, in applicant’s mark, the
additional word “Love” merely identifies more specifically
the goal or destination of the “Passport.”
Applicant argues that its contention that there is no
confusion “is supported by another factor, i.e., the
existence of third-party marks which contain the formative
‘passport’ which co-exist on the Principal Register.”
Brief at 4. However, applicant’s evidence to support this
argument is only a list that includes the serial and
registration number and the word mark. While the examining
attorney has objected to this evidence on the ground that
it was not timely submitted (Brief at n.3), inasmuch as
applicant submitted this evidence with its request for
reconsideration, it is timely. However, the examining
attorney has also objected to this evidence because no
actual printouts of registration were submitted. We agree
that a simple list of trademarks with their serial and
registration numbers is not probative evidence. In re
Ser No. 76501790
7
Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974) (“[T]he
submission of a list of registrations is insufficient to
make them of record”). We also agree that while third-
party registrations may be used to demonstrate that a
portion of a mark is suggestive or descriptive, they cannot
be used to justify the registration of another confusingly
similar mark. In re J.M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1987). Therefore, this list does not support
applicant’s argument that there is not a likelihood of
confusion.
In addition, applicant has submitted copies of two
applications. The first (Serial No. 78119551) is for the
mark THE GOLDEN DOLPHIN SPA YOUR PASSPORT TO PARADISE and
design for “toiletries, specifically, skin care lotions
oils and soaps, aromatherapy oils, tanning lotions and
oils.” The second (Serial No. 78162758) is for the mark
PASSPORT TO LOVE for, inter alia, perfume, but this
application is now abandoned. An abandoned application and
a pending application for a very different mark hardly
support applicant’s position. Our principal reviewing
court has commented on the use of third-party
registrations: “Much of the undisputed record evidence
relates to third party registrations, which admittedly are
given little weight but which nevertheless are relevant
Ser No. 76501790
8
when evaluating likelihood of confusion. As to strength of
a mark, however, registration evidence may not be given any
weight.” Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d
200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (emphasis in
original). See also AMF Inc. v. American Leisure Prods.,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) ("The
existence of [third party] registrations is not evidence of
what happens in the market place or that customers are
familiar with them").
Therefore, when we compare the marks in their
entireties, we find that, while they are not identical to
the extent that applicant includes the word “Love,” their
meaning and connotation would be very similar and their
appearance and pronunciation would not be dissimilar. See,
e.g., Wella Corp. v. California Concept Corp., 558 F.2d
1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and
surfer design likely to be confused with CONCEPT for hair
care products); In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“With respect
to JOSE, the Board correctly observed that the term simply
reinforces the impression that GASPAR is an individual’s
name. Thus, in accord with considerable case law, the JOSE
term does not alter the commercial impression of the mark.”
Ser No. 76501790
9
The marks JOSE GASPAR GOLD and GASPAR’S ALE were determined
to be similar).
Applicant relies on the following cases: Colgate-
Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 167
USPQ 529 (CCPA 1970) (PEAK PERIOD for deodorants and PEAK
for dentifrice not confusingly similar) and Lever Brothers
Co. v. Barcolene Co., 463 F.2d 1107, 174 USPQ 392 (CCPA
1972) (ALL CLEAR! not confusingly similar to ALL for
household cleaners). However, in the Colgate-Palmolive
case, not only did the marks create different impressions
(PEAK and PEAK PERIOD) but the goods were substantially
different. In the Lever Brothers case, the mark ALL
CLEAR!, with its connotation of air raids was substantially
different from the mark ALL.
In the instant case, we conclude that confusion is
likely if the marks LOVE PASSPORT and PASSPORT were both
used on perfume and cologne.
Decision: The examining attorney’s refusal to
register applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.