Gelati Int'l., Inc.

Trademark Trial and Appeal Board

Oct 6, 2000

No. 75179289 (T.T.A.B. Oct. 6, 2000)

Paper No.25
TH/smt
10/6/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Gelati International, Inc.
________
Serial No. 75/179,289
_______
Ezra Sutton of Ezra Sutton, P.A. for Gelati International,
Inc.
Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (Dave Shallant, Managing Attorney)
_______
Before Hanak, Walters and Holtzman, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Gelati International, Inc. (applicant) seeks to
register U.S. SPORTS GEAR for “men’s, ladies’, and
children’s clothing; namely, underwear, sleepwear, and
lingerie.” The intent-to-use application was filed on
October 9, 1996.
The Examining Attorney has refused registration on two
grounds. First, citing Section 2(d) of the Trademark Act,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No.75/179,289
2
the Examining Attorney contends that applicant’s mark, as
applied to the applicant’s goods, is likely to cause
confusion with the following two marks owned by the same
entity: US SPORTS registered for “footwear having an upper
portion made of canvas or other man made material, such as
sneakers and and the like” (Registration No. 1,081,814);
and US SPORTS registered for “footwear and clothing, namely
sweatshirts” (Registration No. 1,590,979). Second, citing
Section 2(e)(2) of the Trademark Act, the Examining
Attorney contends that applicant’s mark is primarily
geographically descriptive of applicant’s goods.
When refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
We will consider first the refusal pursuant to Section
2(d) of the Trademark Act. In any likelihood of confusion
analysis, two key considerations are the similarity of the
goods and the similarity of the marks. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29(CCPA 1976).
Considering first the goods, we note that the
Examining Attorney has made of record absolutely no
evidence. In particular, the Examining Attorney has made
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of record no evidence demonstrating that the same companies
manufacture or market, on the one hand, underwear,
sleepwear and lingerie and, on the other hand, footwear and
sweatshirts. The Examining Attorney has certainly not
demonstrated that companies manufacture and market under
the same trademarks underwear, sleepwear, lingerie,
footwear and sweatshirts.
This Board in the past has held that, at least with
regard to underwear and footwear, these two items of
apparel are “distinctly different” and that they “are not
complementary or companion items.” In re British Bulldog,
Ltd., 224 USPQ 854, 856 (TTAB 1984).
Hence, we find that the Examining Attorney has simply
failed to show that applicant’s goods and registrant’s
goods are in anyway related other than that they are items
that fall within that extremely broad category known as
apparel. To be clear, the Examining Attorney has argued
that applicant’s goods and registrant’s goods could all be
purchased in department stores. (Examining Attorney’s
brief page 5). We will take judicial notice that this is
the case despite the fact the Examining Attorney has not
made of record evidence desmontrating it to be the case.
However, it has long been held that a “wide variety of
products” are sold in large stores such as department
Ser No.75/179,289
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stores and supermarkets. Federated Foods, 192 USPQ at 29.
The mere fact that applicant’s goods and registrant’s goods
could both be found in such large stores does not establish
that the goods are related.
Given the fact the only relationship between
applicant’s goods and registrant’s goods is that they all
are items within that broad category of goods known as
apparel, we hold that the marks would have to be identical
or extremely similar in order for there to exist a
likelihood of confusion. Put quite simply, we find that
the presence of the word GEAR in applicant’s mark is
sufficient to distinguish it from registrant’s mark. We
hasten to add, however, that on a different record where
the evidence established a closer relationship between
applicant’s goods and registrant’s goods, this Board may
well come to a different result.
Turning next to the refusal pursuant to Section
2(e)(2) of the Trademark Act, we reiterate that the
Examining Attorney has made of record no evidence. We
certainly do not disagree with the Examining Attorney when
he argues that U.S. stands for the United States, and that
the United States is, obviously, a well known geographic
location. However, we find that rather than viewing
applicant’s mark as indicating where applicant’s goods
Ser No.75/179,289
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originate from, consumers could just as easily view the
U.S. SPORTS portion of applicant’s mark as a unitary phrase
referring to particular sports associated with the United
States, such as baseball and football. Again, we hasten to
add that on a different record containing evidence of
consumer perception, this Board may well reach a different
resolute.
Decision: The refusal to register is reversed.
E. W. Hanak
C. E. Walters
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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