FP & L, Inc.

Trademark Trial and Appeal Board

Feb 6, 2009

No. 77197067 (T.T.A.B. Feb. 6, 2009)

Mailed: February 6, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re FP & L, Inc.
________

Serial Nos. 77197041; 77197067; and 77214574
_______

Michael Cerrati of Patel & Alumit, P.C. for FP & L, Inc.

Dayna J. Browne, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Hairston, Rogers and Mermelstein, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Applications were filed by FP & L, Inc. to register
the following marks for the identified goods and services:
(1) A FINE MESS and design, as shown below,

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 77197041; 77197067; and 77214574
2
for “clothing, primarily for young people, namely, socks,
bras, gloves, footwear, shoes, thongs, slippers, mukluks,
beanies, baseball caps, berets;”1
(2) A FINE MESS (in standard character form) for “on-line
retail store services featuring clothing, bags, toys and
games, wherein all of the foregoing are primarily for young
people;”2 and
(3) A FINE MESS and design, as shown below,

for “clothing, primarily for young people, namely, T-
shirts; dresses; sweaters; blouses; pants; undershirts;
skirts; jackets; sweat shirts; tank tops; jeans; shorts;

1 Application Serial No. 77197041, filed June 4, 2007, which is
based on an allegation of a bona fide intention to use the mark
in commerce. The application includes the following description
of the mark: The mark consists of the words A FINE MESS written
in stylized font with the letters A, F and M in capital letters
and the remaining letters in lower case; wherein the wording A
FINE appears above the word MESS, and the image contains four
stars, abstract lines and designs between and on either side of
the wording.
2 Application Serial No. 77197067, filed June 4, 2007, which is
based on an allegation of a bona fide intention to use the mark
in commerce.
Ser Nos. 77197041; 77197067; and 77214574
3
skorts; overalls; pajamas; loungewear; underwear; ponchos;
scarves; belts; hats.”3
The trademark examining attorney refused registration
in each application under Section 2(d) of the Trademark Act
on the ground that applicant’s mark, when used in
connection with applicant’s goods and services, so
resembles the previously registered mark ANOTHER FINE MESS
for “clothing, namely, T-shirts,”4 as to be likely to cause
confusion.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs. In view
of the similarity of the records and issues in the three
applications, the Board ordered the cases consolidated on
September 29, 2008. Thus, we issue this single opinion.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set

3 Application Serial No. 77214574, filed June 25, 2007, which is
based on an allegation of first use anywhere and in commerce on
November 1, 2005. The application includes the following
description of the mark: The mark consists of the words A FINE
MESS written in a stylized font with the letters A, F and M in
capital letters and the words A FINE appearing above the word
MESS; with four stars and horizontal lines appearing in the
background and with designs on either side of the wording.
4 Registration No. 2552838, issued March 26, 2002; Section 8
affidavit accepted.
Ser Nos. 77197041; 77197067; and 77214574
4
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Insofar as the goods and services are concerned,
applicant contends that its clothing and online retail
store services featuring clothing, primarily for young
people, are not related to registrant’s T-shirts.
Applicant maintains that its clothing is trend-setting in
nature and purchased by young people, whereas registrant’s
T-shirts are souvenir-type items purchased by aficionados
of Laurel and Hardy films. Insofar as the trade channels
are concerned, applicant contends that there is no overlap
because its clothing is sold in retail outlets that carry
trendy lines of clothing, whereas registrant’s T-shirts are
sold in retail outlets that feature motion picture
memorabilia.
Furthermore, applicant argues that confusion is not
likely because purchasers of registrant’s T-shirts are
sophisticated in that they desire products that “will
Ser Nos. 77197041; 77197067; and 77214574
5
outwardly portray their affection for Laurel and Hardy or
their appreciation for and knowledge of classic cinema.”
(Brief, p. 12).
With respect to the marks, applicant contends that the
respective marks are dissimilar in sound, appearance,
connotation and commercial impression. In particular,
applicant argues that all three of its marks contain the
word “A” rather than “ANOTHER,” and two of its marks
contain a design element, which serve to distinguish its
marks, in terms of sound and appearance, from registrant’s
mark. Insofar as the connotations and commercial
impressions of the marks are concerned, applicant contends
that purchasers of registrant’s goods would understand
registrant’s ANOTHER FINE MESS mark to refer to the films
of the comedy duo Laurel and Hardy, whereas purchasers of
applicant’s goods would not understand applicant’s A FINE
MESS marks to refer to these films. Thus, it is
applicant’s position that the respective marks differ in
connotation and commercial impression.
In support of its arguments, applicant submitted a
copy of the Board’s non-precedential decision in In re
Larry Harmon Pictures Corporation, Serial No. 74468324
(November 15, 2001). That case involved a refusal to
register the application which issued into the cited
Ser Nos. 77197041; 77197067; and 77214574
6
registration on the ground that the subject mark ANOTHER
FINE MESS, as used on T-shirts, did not function as a mark,
but rather was mere ornamentation. In holding that ANOTHER
FINE MESS functioned as a mark, the Board considered the
manner in which ANOTHER FINE MESS was used on registrant’s
actual T-shirts, as well as evidence bearing on the
significance of the phrase “another fine mess.” The Board
found there was sufficient evidence to establish that
“‘another fine mess’ was the signature phrase of the comic
duo Laurel and Hardy” and “purchasers of applicant’s T-
shirts would be likely to be persons who are familiar with
Laurel and Hardy and [] these purchasers would be apt to
make the association between the phrase and the [Oliver]
Hardy character of the Laurel and Hardy team.” (Decision,
pp. 11-12).
As further support for its arguments, applicant
submitted a printout from a third-party website featuring
pictures of applicant’s clothing; Google results of
searches for “another fine mess,” “a fine mess,” and “a
fine mess clothing;” a printout of a “My space” webpage
featuring pictures of applicant’s clothing; and a picture
of one of registrant’s T-shirts showing the mark ANOTHER
FINE MESS and the Laurel and Hardy characters displayed on
the front thereof. In addition, applicant submitted an
Ser Nos. 77197041; 77197067; and 77214574
7
Internet printout containing an overview of the Laurel and
Hardy comedy short film “Another Fine Mess”; and an
Internet printout which indicates that although the phrase
“another fine mess” is associated with Laurel and Hardy,
Oliver Hardy never uttered that line, but instead uttered
“another nice mess.”
The examining attorney, on the other hand, argues that
applicant’s clothing and online retail store services
featuring clothing, all primarily for young people, are
closely related to registrant’s T-shirts, and in one
instance legally identical, inasmuch as registrant’s T-
shirts encompass applicant’s T-shirts primarily for young
people. The examining attorney points out that the
identified T-shirts in the cited registration include none
of the limitations argued by applicant – the T-shirts are
not limited to Laurel and Hardy souvenir-type items, there
is no limitation that the T-shirts are sold only to
aficionados of Laurel and Hardy films, and there is no
limitation that the channels of trade are retail outlets
that feature motion picture memorabilia. Thus, the
examining attorney argues that applicant’s and registrant’s
T-shirts must be presumed to be identical in nature and
marketed in the same channels of trade to the same classes
of purchasers. As to applicant’s remaining clothing items
Ser Nos. 77197041; 77197067; and 77214574
8
and online retail store services featuring clothing, all
primarily for young people, the examining attorney argues
that these goods and services are closely related to
registrant’s T-shirts. In support of her position in this
regard, the examining attorney submitted third-party
registrations for marks that cover many of the clothing
items in applicant’s applications and T-shirts; third-party
registrations for marks that cover online retail store
services which feature clothing and T-shirts; and printouts
from the websites of Internet retailers which show that
these retailers offer their online retail store services
featuring clothing and clothing items under the same mark.
With respect to the marks, the examining attorney
maintains that applicant’s and registrant’s marks are
similar in terms of sound, appearance, connotation and
commercial impression due to the shared words FINE MESS;
that the words “A” and “ANOTHER” do little to distinguish
the respective marks; and that the design element in two of
applicant’s marks does not serve to distinguish these marks
from registrant’s mark. With respect to the connotation of
the marks, the examining attorney is not persuaded by
applicant’s contention that purchasers would understand
registrant’s mark to refer specifically to the films of
Laurel and Hardy. Rather, the examining attorney maintains
Ser Nos. 77197041; 77197067; and 77214574
9
that both registrant’s and applicant’s marks generally
connote a “fine mess,” and the incongruity created by
pairing the words “fine” and “mess.” The examining
attorney submitted a “Wikipedia” printout which indicates
that the exact phrase uttered by Oliver Hardy was “a nice
mess;” not “a fine mess.” Also, the examining attorney has
submitted several Internet printouts of articles wherein
the phrase “a fine mess” is used.
We first consider the goods and services of applicant
and registrant. It is not necessary that the respective
goods and services be competitive, or even that they move
in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods and services are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods and services are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they
originated from the same producer. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991).
In addition, the issue of likelihood of confusion is
determined on the basis of the goods and services
identified in the respective applications and the cited
Ser Nos. 77197041; 77197067; and 77214574
10
registration, regardless of what the record may reveal as
to the particular nature of the goods and services, their
actual trade channels, or the class of purchasers to whom
they are in fact directed and sold. See e.g., Octocom
Systems Inc. v. Houston Computer Services, Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); and Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987).
It is well settled that absent any specific
limitations or restrictions in the identifications of goods
and services as listed in the applicant’s applications and
the registrant’s registration, the issue of likelihood of
confusion must be determined in light of a consideration of
all normal and usual channels of trade and methods of
distribution for the respective goods and services and on
the basis of all the usual customers therefor. See, e.g.,
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed.
Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 940 (Fed. Cir. 1983); and Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973).
Applying these principles to the goods and services in
the present case, we find that registrant’s T-shirts
clearly encompass applicant’s T-shirts primarily for young
Ser Nos. 77197041; 77197067; and 77214574
11
people. Also, we find that the record supports the
examining attorney’s position that applicant’s remaining
clothing items and online retail store services featuring
clothing, all primarily for young people, are related to
registrant’s T-shirts. Although the third-party
registrations are not evidence of use of the marks shown
therein, they serve to suggest that the involved goods and
services are of a type which may emanate from the same
source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993). In addition, the Internet printouts are
probative of a close relationship between applicant’s
online retail store services featuring clothing primarily
for young people and registrant’s T-shirts. The Board has
found in the past that clothing and retail sales of
clothing are related for purposes of likelihood of
confusion. See In re Peebles, Inc., 23 USPQ2d 1795 (TTAB
1992) [MOUNTAINHIGH for clothing, namely coats sold in
applicant’s stores is likely to cause confusion with
MOUNTAIN HIGH for retail outlet store services for camping
and mountain climbing equipment]; In re U.S. Shoe Corp.,
229 USPQ 707 (TTAB 1985) [CAREER IMAGE (stylized) for
retail women’s clothing store services and clothing held
likely to be confused with CREST CAREER IMAGES (stylized)
for uniforms]; and In re Gerhard Horn Investments, Ltd.,
Ser Nos. 77197041; 77197067; and 77214574
12
217 USPQ 1181 (TTAB 1983) [MARIPOSA for retail women’s
clothing store services is likely to cause confusion with
MARIPOSA for woven and knit fabrics of cotton, acrylic and
polyester].
We recognize that in the Larry Harmon case, the Board
considered the fact that registrant’s actual T-shirts
displayed the mark ANOTHER FINE MESS and a picture of
Laurel and Hardy on the front thereof. Because the Larry
Harmon case involved the issue of whether ANOTHER FINE MESS
functioned as a mark for registrant’s T-shirts, it was
proper, and indeed necessary, for the Board to consider the
manner in which ANOTHER FINE MESS was used on registrant’s
actual T-shirts. However, in the present case involving
the issue of likelihood of confusion, the Board may not
consider applicant’s evidence that is restrictive of the
nature of registrant’s identified T-shirts, in determining
whether the involved goods and services are related. See
In re Bercut-Vandervoot & Co., 229 USPQ 763 (TTAB 1986).
Rather, as previously indicated, the issue of likelihood of
confusion herein must be determined on the basis of
registrant’s identified goods, i.e., T-shirts,
notwithstanding what the record or the Board’s prior
decision may indicate as to their specific nature. In
other words, applicant may not restrict registrant’s T-
Ser Nos. 77197041; 77197067; and 77214574
13
shirts to Laurel and Hardy souvenir-type items. For
similar reasons, applicant may not restrict its T-shirts to
trend-setting T-shirts.
Insofar as the channels of trade and classes of
purchasers are concerned, in the absence of any limitations
in the respective identifications of goods and services, we
find that the involved goods and services would travel in
essentially the same channels of trade to the same class of
purchasers, namely ordinary consumers who would exercise
only an ordinary degree of care in purchasing the goods and
services. In this regard, although we note that
applicant’s identified clothing and online retail store
services featuring clothing both contain the limitation
that they are primarily for young people, it is still the
case that such goods and services may be purchased by
adults for young people.
We also reject applicant’s contention that the
purchasers of registrant’s T-shirts, in particular, are
sophisticated. In view of our discussion above, the
purchasers of registrant’s T-shirts are not limited to
aficionados of Laurel and Hardy films. Rather, they must
be presumed to include ordinary consumers who would
exercise only an ordinary degree of care in purchasing T-
shirts.
Ser Nos. 77197041; 77197067; and 77214574
14
In sum, we find that applicant’s and registrant’s
goods and services are legally identical in part (T-shirts
primarily for young people) and otherwise sufficiently
related that if offered under the same or similar marks,
confusion is likely to result.
Turning then to the marks, we must determine whether
applicant’s marks and registrant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Furthermore, 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 commercial impression that
confusion as to the source of the goods and/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
Ser Nos. 77197041; 77197067; and 77214574
15
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
Although there are specific differences between
applicant’s A FINE MESS standard character and design marks
and applicant’s ANOTHER FINE MESS mark, we find that, on
balance, the similarities outweigh the differences. In
comparing the respective marks, we find that the each of
the involved marks is dominated by the words “FINE MESS.”
The additional words “A” and “ANOTHER” simply modify “FINE
MESS,” and are insufficient to distinguish the respective
marks. Furthermore, the stylized font of A FINE MESS and
background design in applicant’s two marks do not serve to
distinguish these marks from registrant’s mark. Although
the design is prominent, 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 used
in calling for the goods and services. In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987). Thus, the
dominant portion of each of applicant’s and registrant’s
marks is identical. Although the marks are dominated by
the identical term, we must, of course, consider the marks
in their entireties. In doing so, we find that the marks
are similar in sound and appearance.
Ser Nos. 77197041; 77197067; and 77214574
16
With respect to the connotation of the marks, the
record herein demonstrates that the phrase “another fine
mess” is associated with Laurel and Hardy. The “Wikipedia”
printout discussing Laurel and Hardy states that the phrase
“means to blame a partner for causing an avoidable
problem.” We have no doubt that many purchasers are likely
to associate registrant’s ANOTHER FINE MESS mark with
Laurel and Hardy and ascribe the foregoing meaning to
registrant’s mark. However, the same meaning may attach to
A FINE MESS. Even assuming that the marks have somewhat
different connotations, the similarities in sound and
appearance outweigh any differences in connotation.
Further, when each of applicant’s marks and
registrant’s mark are considered in their entireties, the
marks engender sufficiently similar overall commercial
impressions so that, when used on the legally identical and
otherwise closely related goods and services herein,
confusion would be likely to occur among consumers. That
is, it is reasonable to conclude that consumers familiar
with ANOTHER FINE MESS T-shirts will view A FINE MESS
clothing and online retail store services featuring
clothing, primarily for young people, as originating from
registrant. Specifically, applicant’s A FINE MESS standard
character and design marks are likely to be viewed as
Ser Nos. 77197041; 77197067; and 77214574
17
variants of registrant’s ANOTHER FINE MESS mark. We note
that both the examining attorney and applicant have
submitted evidence which indicates that the actual saying
uttered by Oliver Hardy was “another nice mess,” not
“another fine mess.” However, as previously indicated, it
is the phrase “another fine mess” which is generally
associated with Laurel and Hardy and has become something
of an iconic phrase. In view of the apparent imprecision
about the phrase, as repeated by others, it is equally
likely that consumers would find A FINE MESS also to evoke
the iconic phrase and would find ANOTHER FINE MESS and A
FINE MESS confusingly similar.
Again, the fact that each of the involved marks is
dominated by the shared words FINE MESS plays a significant
role in our analysis.
We conclude that consumers familiar with registrant’s
T-shirts offered under the mark ANOTHER FINE MESS would be
likely to believe, upon encountering applicant’s A FINE
MESS standard character and design marks for clothing and
on line retail store services featuring clothing, even when
restricted to items primarily for young people, that the
respective goods and services originate from or are somehow
associated with or sponsored by the same source.
Ser Nos. 77197041; 77197067; and 77214574
18
Decision: The refusal to register under Section 2(d)
is affirmed in each of applicant’s applications.