Hotline Sales Corp.

Trademark Trial and Appeal Board

Feb 6, 2001

No. 75526304 (T.T.A.B. Feb. 6, 2001)

Paper No. 9
2/6/01
UNIT
Howard Joseph
Bradley B. Bay
114 (Margaret
Before Cissel,
Judges.
Opinion by Cis
On July 2
filed to regis
Register for “
in Class 39.
claim that it
these goods in
The Exami
Section 2(d) o
applicant’s ma
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.
RFC
ED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hotline Sales Corp.
________
Serial No. 75/526,304
_______
for Hotline Sales Corp.
at, Trademark Examining Attorney, Law Office
Le, Managing Attorney).
_______
Quinn and Hairston, Administrative Trademark
sel, Administrative Trademark Judge:
7, 1998, the above-referenced application was
ter the mark “TEMPTRESS” on the Principal
clothing, specifically hosiery and lingerie,”
The basis for the application was applicant’s
had used the mark sought to be registered on
interstate commerce since 1992.
ning Attorney refused registration under
f the Lanham Act on the ground that
rk, “TEMPTRESS,” as used in connection with
Ser No. 75/526,304
2
hosiery and lingerie, so resembles the identical mark
“TEMPTRESS,” which is registered1 for “brassieres, garter
belts, girdles, pantie girdles, and foundation garments,”
in Class 25, that confusion is likely. Applicant was also
advised that the word “specifically” in the identification-
of-goods clause in the application should be replaced with
the word “namely,” and that the proper classification for
the goods specified in the application is Class 25.
Responsive to the first Office Action, applicant
amended the classification and the identification-of-goods
clause to conform to the Examining Attorney’s suggestions.
Applicant also argued that the Examining Attorney was “in
error” in finding the cited registered mark to be a bar
under Section 2(d) of the Lanham Act. Enclosed in support
of applicant’s argument was the affidavit of Don K. Whang,
applicant’s owner and president, who stated that applicant
does not sell any of the products sold by the registrant
under the registered mark, and that the registrant does not
sell any of the products applicant sells under the mark
sought to be registered. Mr. Whang also stated that “[a]ll
of registrant’s products are ‘devices’ for support of body
1 Reg. No. 699,054 issued on the Principal Register to
Munsingwear, Inc. on June 7, 1960. Combined affidavit under
Sections 8 and 15; renewed.
Ser No. 75/526,304
3
parts, not clothing. All of applicant’s products are
clothing.”
The Examining Attorney was not persuaded by
applicant’s response, and the refusal to register under
Section 2(d) of the Act was made final in the second Office
Action. Submitted in support of the refusal to register
were copies of third-party trademark registrations, five of
which are based on use in commerce, wherein hosiery and
lingerie are listed along with garter belts and foundation
garments such as brassieres and girdles. The Examining
Attorney argued that these registrations show that it is
common for businesses to use one mark in connection with
the sale of both the products set forth in the application
and the goods specified in the cited registration.
Applicant timely filed a Notice of Appeal. Both
applicant and the Examining Attorney filed briefs, but
applicant did not request an oral hearing before the Board.
The sole issue before us on appeal is whether
confusion is likely. Based on careful consideration of the
record in this application and the arguments presented by
both applicant and the Examining Attorney, we find that the
refusal to register is well taken.
In the case of In re E. I. DuPont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973), the predecessor to
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our primary reviewing court set out the factors to be
considered in determining whether confusion is likely.
Chief among these factors are the similarity of the marks
and the similarity of the goods.
In the instant case, notwithstanding applicant’s
arguments to the contrary, the marks are identical.
Applicant argues in its brief that its mark is not similar
to the registered mark because of the stylized presentation
in which the word “TEMPTRESS” is presented on the specimens
of use submitted with the application. As the Examining
Attorney points out, however, in determining whether
confusion is likely, the Board must compare the cited mark
with the mark shown in the drawing submitted with the
application. By submitting a typed drawing of the word
“TEMPTRESS,” applicant has not restricted its claim to the
way the word is displayed in the specimens of record, but
neither did registrant when it registered the same word in
typed form.
Applicant’s mark is identical to the registered mark,
and in this situation, the relationship between the goods
set forth in the application does not need to be as close
in order to support a finding that confusion is likely as
would be the case if the marks were not identical. Amcor,
Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).
Ser No. 75/526,304
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Although these products are not identical, they do not have
to be in order for confusion to be likely. The issue is
not whether the products will be confused, but rather
whether the use of similar marks on them will lead
purchasers to assume mistakenly that they come from the
same source. These goods are all clothing items which may
be worn together by the same ordinary consumers who
purchase them for complementary use through the same
channels of trade. The third-party registration evidence
made of record by the Examining Attorney demonstrates
clearly that the goods specified in the application are
closely related to those set forth in the registration.
That particular businesses have registered their respective
trademarks for all of these products gives the purchasing
public reason to assume that the use of identical marks on
both the goods set forth in the application and the goods
listed in the cited registration is an indication that they
all emanate from a single source. In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck
Co., 6 USPQ2d 1467 (TTAB 1988).
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In summary, we find that the use of these identical
marks on these closely related, complementary items of
wearing apparel is likely to cause confusion.
Decision: The refusal to register under Section 2(d)
of the Lanham Act is affirmed.
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