Frame LA Brands, LLC

Trademark Trial and Appeal Board

Jun 17, 2015

No. 85982535 (T.T.A.B. Jun. 17, 2015)

THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Mailed:
June 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Frame LA Brands, LLC
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Serial No. 85982535
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Mary Sotis, Rachel Kronman and Gayle Denman of Frankfurt Kurnit Klein & Selz,
P.C. for Frame LA Brands, LLC.
Linda A. Powell, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow,
Managing Attorney).

Before Seeherman, Zervas and Kuczma, Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Frame LA Brands, LLC (“Applicant”) seeks registration on the Principal
Register of the mark FRAME DENIM in standard characters for “Clothing, namely,
women’s denim jeans and denim shorts” in International Class 25.1 Applicant
disclaimed the term DENIM.
The Examining Attorney refused registration of Applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that Applicant’s

1 Application Serial No. 85982535 is the “child” application to “parent” application Serial
No. 85733323, filed on September 19, 2012. The “child” application was created on
September 4, 2014 and claims Trademark Act §§ 1(b) and 44(e), 15 U.S.C. §§ 1051(b) and
1126(e), as the filing bases.
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mark is likely to cause confusion or mistake or to deceive in view of Registration
No. 25469302 for the mark FRAME CAP (typed drawing) for “caps” in International
Class 25. Registrant disclaimed the term CAP.
After the refusal was made final, Applicant filed a request to divide and an
appeal. Applicant and the Examining Attorney have both filed briefs.
“Offer” to Amend
We first address Applicant’s “offer” to further limit its identification of goods,
made in its Brief. Applicant announces that if the Board is not “fully persuaded by
the above Appeal,” it will agree to add the limitation “none of the foregoing
including caps” to its identification of goods, and that this limitation “should resolve
any remaining concerns.”3 Once the Board has rendered a decision in an appeal,
however, the application may not be further amended except in two very limited
situations, neither of which is applicable here. Trademark Rule 2.142(g), 37 C.F.R.
§ 2.142(g); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)
§ 1218 (June 2014).
Likelihood of Confusion
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 forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods and/or

2 Registered March 12, 2002. Renewed March 25, 2011.
3 4 TTABVUE 17.
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services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). In this case, Applicant and the Examining Attorney have
also submitted arguments regarding the scope of protection to be afforded the
registered mark, the conditions of sale, and the trade channels for the goods. We
have considered each of these factors and all other factors for which there is
evidence of record.
Similarity/Dissimilarity of the Marks
In considering the similarity/dissimilarity of the marks, we compare the marks
in their entireties as to appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1960 (Fed. Cir. 2005), quoting In re E. I. du Pont de
Nemours & Co., 177 USPQ at 567. “[T]he 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 overall commercial impression so
that confusion as to the source of the goods offered under the respective marks is
likely to result.” H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB
2008).
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. In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing
improper in stating that, for rational reasons, more or less weight has been given to
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a particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.”). With respect to Applicant’s mark,
the highly descriptive word DENIM has been disclaimed; clearly that portion of the
mark plays a subordinate role to the distinctive first portion, FRAME, and, thus, we
have given less weight to the highly descriptive portion. See In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (disclaimed word
“café” in THE DELTA CAFÉ is less significant when comparing marks). Further,
purchasers in general are inclined to focus on the first word or portion of a
trademark, especially where the first portion is followed by a highly descriptive
term (as is the case of DENIM). Presto Products, Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is likely
to be impressed upon the mind of a purchaser and remembered”). See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at
1692. Because both words begin with FRAME, and are followed by highly
descriptive or generic term which do not alter the meaning or commercial
impression of the marks, we find that the marks are similar in meaning and
commercial impression. Further, because each two word mark begins with the same
term and both are in standard character format without any other characteristics to
distinguish them, to this extent we find that the marks are also similar in
appearance and sound.
In arriving at our conclusion, we recognize, of course, that the marks ultimately
must be compared in their entireties. We are not persuaded by Applicant’s
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argument, however, that “the words ‘frame’ and ‘cap’ have multiple different
meanings [and this] is important because it indicates their connotations and
commercial impressions will differ as they are combined with other words in
different trademarks.” Applicant explains:
When considered in the context of clothing, inherent in the FRAME
CAP mark is the connotation and commercial impression that the
mark refers to headwear with an underlying structure. It is common
knowledge that many headwear caps use internal structures to create
and maintain their shape. These structures or “frames” are obvious
upon viewing a graduation cap, flat cap or even the underside of a
common baseball cap.

Alternatively, in FRAME DENIM the word “denim” immediately
connotes clothing or jeans. … “[D]enim” has only one meaning or
connotation - clothing. Because “frame” is used in combination with
“denim,” the definition of “frame” that is most likely to be perceived by
consumers upon encountering FRAME DENIM will be one related to
clothing, i.e. a human body. The word “denim” ties the connotation and
commercial impression of FRAME DENIM to clothing, namely, denim
that hugs the frame of a person. When considered in the context of
clothing, inherent in the mark FRAME DENIM is the connotation and
commercial impression of women’s denim (i.e. jeans) that frame a
women’s shape. Given the differences detailed above, FRAME DENIM
and FRAME CAP will have different meanings, connotations and
commercial impressions in the abstract and when applied to clothing.4

Based on the present record, we are not persuaded that consumers of Applicant’s
goods would attribute one definition of “frame” to registrant’s goods and another
definition of “frame” to Applicant’s goods. There is no evidence in the record of
third-party use of “frame” with either “denim” or “cap,” and there is no evidence
showing the use of “frame” in connection with the structure of a graduation cap, flat
cap or baseball cap, such that we can conclude that consumers would ascribe this
definition to the word FRAME in registrant’s mark. As for the meaning proposed by

4 4 TTABVUE 7-8.
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Applicant for “frame denim,” suffice it to say that we find it implausible. It is more
likely that consumers will perceive registrant’s mark as referring to FRAME
branded caps and Applicant’s mark as referring to FRAME branded denim
products, i.e., jeans and shorts.
As for Applicant’s remaining arguments, although we do not repeat them here,
we have considered them, and find that they are not persuasive. In sum, both
marks consist of the term FRAME followed by a single highly descriptive term, and
there is nothing unique about these terms which render a different meaning or
commercial impression to each mark.
The du Pont factor regarding the similarity between the marks therefore weighs
in favor of a finding of a likelihood of confusion.
Scope of Protection of Registrant’s Mark
Applicant submitted the following third-party applications and registrations to
demonstrate that “Applicant does not have exclusive control over the word FRAME
for clothing” and that the marks exist in a crowded field:
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In addition, Applicant submitted the specimen of use for each of the
registrations listed above, and Internet evidence in connection with Registration
Nos. 3847634, 3554651 and 4469019, to demonstrate that the marks are in use and
that consumers are accustomed to seeing them in the marketplace. Applicant also
maintains that the evidence demonstrates that FRAME is a “diluted formative” in
the field of clothing and refers us to In re Hartz Hotel Services, Inc., 102 USPQ2d
1150 (TTAB 2012), where, according to Applicant, the Board found that GRAND
HOTEL was a weak mark in view of five registrations and ten website pages for
unregistered marks for GRAND HOTEL.
Applicant overstates the probative value of its evidence. Specifically:
● The third-party application, now abandoned, has no probative value.
In general, third-party applications are not evidence of anything other
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than of the fact that they were filed. Interpayment Services Ltd. v.
Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003).

● There is a far greater difference between the third-party registered
marks and registrant’s mark than between Applicant’s and registrant’s
marks. For example, none of them shares the structure that is common
to the two marks now at issue, namely FRAME combined with a highly
descriptive term.

● The specimens found in the registration files are not evidence that
the marks are currently in use.

● Those third-party registrations for which there is no evidence of
actual use do not demonstrate that the public is aware of the
registered marks. Absent evidence of actual use, third-party
registrations do not show that the marks are in use on a commercial
scale (or at all) or that the public has become familiar with them. See
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462,
463 (CCPA 1973) (the purchasing public is not aware of registrations
reposing in the U.S. Patent and Trademark Office); Productos Lacteos
Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d
1921, 1934 (TTAB 2011).

● Registration No. 3415179 has been cancelled.

Further, the USPTO’s treatment of other marks does not justify the registration
of another purportedly similar mark if it is confusingly similar to a registered mark;
we must decide each case on its own merits and “[e]ven if some prior registrations
had some characteristics similar to [applicant’s] application, the PTO’s allowance of
such prior registrations does not bind the Board.” In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). As for Applicant’s reliance on In re
Hartz Hotel Services, the third-party registrations in that case were for the same
services, i.e., hotel services, and for similar marks. In the present case, the third-
party registrations are for marks that differ in important respects from registrant’s
mark and its goods.
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Thus, Applicant has not persuaded us that the scope of protection for registrant’s
mark should be limited.
Similarity/Dissimilarity of the Goods
It is well settled that the goods of the parties need not be identical or
competitive, or even offered through the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient that the respective goods of the
parties are related in some manner, and/or that the conditions and activities
surrounding the marketing of the goods 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 originate from the
same source. See Hilson Research, Inc. v. Soc’y for Human Res. Mgmt., 27 USPQ2d
1423 (TTAB 1993); In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978). The issue, of course, is not whether purchasers would
confuse the goods, but rather whether there is a likelihood of confusion as to the
source of the goods. In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984).
The Examining Attorney introduced several use-based third-party registrations,
showing a single mark registered for both types of goods involved herein. “Third-
party registrations which cover a number of differing goods and/or services, and
which are based on use in commerce, although not evidence that the marks shown
therein are in use on a commercial scale or that the public is familiar with them,
may nevertheless have some probative value to the extent that they may serve to
suggest that such goods or services are of a type which may emanate from a single
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source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988),
aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993).
Applicant challenges the third-party registration evidence, maintaining that
only two registrations specifically mention women’s denim jeans and shorts and
therefore are the only probative registrations. We acknowledge that the other
registrations identify “jeans” without specifying that they are for women. However,
the identifications do not exclude jeans for women. Because the term “jeans” in the
registrations encompasses jeans for women, and there are other registrations in the
record which list jeans for women, we do not discount these registrations.
Applicant also states that the caps depicted in the Internet evidence are almost
all for men (e.g., men’s baseball caps). The caps depicted, however, may be worn by
both men and women, the webpages do not state that the caps are only for men, and
registrant’s identification of goods is not limited to caps for men only.
Applicant also challenges the Examining Attorney’s website evidence showing
both jeans and caps bearing the same mark because one item is depicted on a
retailer’s website and the other is depicted on eBay and Google Image. We do not
discount this evidence; it was not submitted to demonstrate that the goods are sold
in the same locations. The evidence is probative because it demonstrates that the
same mark is depicted on the same goods as those set forth in Applicant’s
application and registrant’s registration.
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Thus, we are persuaded by the Examining Attorney’s evidence that the goods are
related.
Similarity/Dissimilarity of Trade Channels and Classes of Purchasers
Insofar as the trade channels and classes of purchasers are concerned, we note
there are no limitations in either Applicant’s or registrant’s identification of goods.
Accordingly, we must presume that the goods, as identified, are marketed in all
normal trade channels for such goods and to all normal classes of purchasers for
such goods. In re Elbaum, 211 USPQ 639 (TTAB 1981). As shown by the Examining
Attorney’s evidence, the trade channels include clothing items sold by retailers such
as Levi’s and Eddie Bauer on their websites. The trade channels are not limited to
the actual retailers for registrant and the top-tier department stores and other up-
market online stores that Applicant asserts are its channels of trade, as stated at
pp. 13-14 in Applicant’s Brief. Further, Applicant’s and registrant’s goods, as
common clothing items, are purchased by the same classes of purchasers, who are
ordinary consumers.
The du Pont factor concerning the trade channels and purchasers weigh in favor
of a finding of likelihood of confusion.
Conditions of Purchase
The record reflects that caps ($19.95, see August 24, 2013 Office Action at 74)
and denim jeans ($19.99, see August 24, 2014 Office action at 78),5 are relatively
inexpensive items. Although Applicant maintains that purchasers of such goods,

5 Applicant’s women’s denim jeans and denim shorts are not limited to any specific price
point, so we must presume that it includes low cost women’s denim jeans and denim shorts.
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and of denim shorts are sophisticated purchasers, the goods are sold to the general
public, and there is nothing in the record to indicate that these consumers are
particularly sophisticated with respect to such items. Even if we posit that
purchasers of denim jeans and shorts will take care in their purchasing decision due
to concerns about the style and fit of these items, the marks are extremely similar,
with the only differences in the marks being a highly descriptive or generic term.
Purchasers are therefore likely to ascribe the differences in the marks to the specific
goods with which they are used rather than to view them as indicating separate
sources for the goods. The du Pont factor concerning the conditions of sale therefore
is neutral in our analysis.
Balancing the Factors
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. We have found
that Applicant’s mark is similar to the cited registered mark and that the goods are
related. Further, we have found that the factor regarding the relevant purchasers
and trade channels weigh in favor of a finding of likelihood of confusion, the factor
regarding conditions of sale is neutral, and that Applicant has not persuaded us
that registrant’s mark is sufficiently weak that its scope of protection does not
extend to prevent the registration of Applicant’s mark. We therefore affirm the
Examining Attorney’s refusal of registration on the ground that Applicant’s mark
for Applicant’s goods so closely resembles the registered mark for related goods as to
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be likely to cause confusion, mistake or deception as to the source of Applicant’s
goods.
Decision: The refusal to register is affirmed.