International Intimates Inc.

Trademark Trial and Appeal Board

Nov 3, 2011

No. 77911197 (T.T.A.B. Nov. 3, 2011)

Mailed: November 3, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re International Intimates Inc.
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Serial No. 77911197
_______

Charles P. LaPolla and Sean P. McMahon of Ostrolenk Faber
LLP for International Intimates Inc.

Doritt Carroll, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Holtzman, Kuhlke and Shaw, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

International Intimates Inc. seeks registration on the
Principal Register of the standard character mark KISS KISS
BY INTERNATIONAL INTIMATES INC. for goods identified as
“clothing and apparel, namely, undergarments, lingerie and
sleepwear” in International Class 25.1

1 Application Serial No. 77911197, filed January 13, 2010, under
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b). The
application includes a disclaimer for “INC.,” a claim for prior
Registration No. 3271985 for the mark INTERNATIONAL INTIMATES,
and a claim of acquired distinctiveness for “INTERNATIONAL
INTIMATES” based on ownership of the prior registration.

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77911197
2
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used on the identified goods, so
resembles the registered standard character mark QISS QISS
for, inter alia, bras, bustiers, robes, slips, boxer
briefs, boxer shorts, lingerie, loungewear, sleepwear, and
underwear in International Class 25.2
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). See also, In re Majestic
Distilling Co., 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. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
We begin by considering the relationship between the
respective goods, channels of trade and classes of
customers. The examining attorney contends, and applicant

2 Registration No. 3434337 issued May 27, 2008. The registration
contains other goods, however, the examining attorney has based
her refusal on those listed above.

Serial No. 77911197
3
does not dispute that, the goods are legally identical
inasmuch as “both parties offer lingerie and sleepwear, and
many of the registrant’s other goods, such as bras and
boxer shorts, fall within the applicant’s term
‘underwear.’” Br. p. 3. Further, in view of the legal
identity of the goods we must presume that they travel in
the same channels of trade and are offered to the same
classes of customers. Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) (we
must make our determination based on the goods as they are
identified in the application and registration and not
based on evidence of their actual use); and Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1987). See also In re Thor Tech,
Inc., 90 USPQ2d 1634 (TTAB 2009); and In re Elbaum, 211
USPQ 639, 640 (TTAB 1981).
In view of the above, we find that the goods are
legally identical and travel in the same channels of trade.
Further, we find that the potential purchasers overlap
and include the general public. Applicant argues that the
relevant consumers are sophisticated. Specifically,
applicant asserts that:
It is well-settled that purchasers of clothing
are sophisticated and very brand-conscious.
Consumers of clothing are highly sophisticated
Serial No. 77911197
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and discriminating in their purchasing decisions.
... Due to the importance of style, design, and
fashion as factors in the selection of clothing,
such goods are generally purchased by relatively
discerning consumers who can be expected to
exercise considerable care in selecting the
goods, and who are in most cases actively seeking
a specific source of the goods. As a result,
such consumers are unlikely to be easily confused
as to the source of such goods.

Br. p. 15.
We note that there is no evidence in the record to
support a finding that the goods and purchasing process are
of such a nature that purchasers would exercise unusual
care or otherwise would distinguish similar marks for
legally identical goods. See, e.g., Electronic Design &
Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 21
USPQ2d 1388 (Fed. Cir. 1992) (record confirms that
opposer’s services are expensive and are purchased only by
experienced corporate officials after significant study and
contractual negotiation and that the evaluation process
used in selecting applicant’s products requires significant
knowledge and scrutiny). Thus, we find that the level of
care taken by the average, let alone least sophisticated,
consumer of the identified goods does not serve to avoid
likely confusion. Moreover, as is frequently stated, even
if consumers are knowledgeable in a particular field that
Serial No. 77911197
5
does not necessarily mean that they are immune from source
confusion. In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
Applicant focuses its arguments on the du Pont factor
concerned with the similarity or dissimilarity of the
marks. In making this determination we are cognizant of
the principle that the more closely related the goods are,
the less similarity in the marks is required to support a
conclusion of likelihood of confusion. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992).
We analyze the respective marks in terms of their
appearance, sound, connotation and overall commercial
impression. It is well settled that marks must be
considered in their entireties, not dissected or split into
component parts and each part compared with other parts.
It is the impression created by the involved marks, each
considered as a whole, that is important. See Kangol Ltd.
v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945
(Fed. Cir. 1992). However, “[t]hat a particular feature is
descriptive [or otherwise lacking in distinctiveness] ...
with respect to the involved goods or services is one
commonly accepted rationale for giving less weight to a
portion of a mark...” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Serial No. 77911197
6
It is the examining attorney’s position that
applicant’s mark QISS QISS is the phonetic equivalent to
the KISS KISS portion of registrant’s mark KISS KISS BY
INTERNATIONAL INTIMATES, INC. Applicant challenges this
assessment and argues that registrant’s mark would be
pronounced KWISS KWISS. Applicant bases its prediction of
consumer pronunciation on the following reference from
encyclopedia.com:
Q – Q the 17th letter of the alphabet,
corresponding to the koppa of western Greek
alphabets. U must follow the letter in English
(e.g., queen, question), and the combination
properly represents a sound much like the true
voiceless labiovelar stop (also represented by
the combination kw).

Applicant argues that “the stem ‘QI’ as used in the
cited mark QISS QISS is inconsistent with common phonetic
usage. Consumers, therefore, would be more likely to
pronounce a grammatically incorrect word in a way which is
consistent with common phonetic usage. Thus, the ‘QI’ stem
in the cited mark could also be pronounced as ‘KW’ as in
“QUEEN’ or ‘EQUAL’ making the cited mark sound like KWISS
KWISS ... [s]ince English speakers would be conditioned to
seeing a ‘Q’ followed by a ‘U’, consumers would be more
inclined to pronounce a grammatically incorrect mark in its
most natural sense.” Br. p. 11.
Serial No. 77911197
7
The examining attorney, in her brief, references
English language dictionary listings3 for the words “qat,
qintar, qoph, Qatar, and Qaddafi” with “k” pronunciations
of the letter “q,” to support her position that “the
applicant’s assumption that ‘q’ without ‘u’ would
nonetheless be given the pronunciation ‘kw’ is improbable.”
Br. p. 5.
As applicant notes, under our jurisprudence there is
no correct pronunciation of a mark that is not a recognized
English word. Centraz Industries Inc. v. Spartan Chemical
Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006). Applicant
argues that “[b]ecause QISS is not a word, there is no
correct way to pronounce it [and t]he examining attorney’s
theory that ‘QISS’ could be pronounced ‘KISS’ is purely
speculative.” Br. p. 5. To the extent it could be shown
that a particular, similar pronunciation is not plausible,
that could be relevant. However, that is not the case
here. While it is possible that consumers would pronounce
QISS as KWISS is it no less plausible that they would
pronounce it like KISS. The fact that the words the
examining attorney uses to show possible consumer

3 We take judicial notice of these dictionary entries. In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002); In
re Total Quality Group Inc., 51 UPQ2d 1474, 1476 (TTAB 1999).

Serial No. 77911197
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pronunciation have a foreign origin does not detract from
the fact that they are in the English language dictionary
and have been accepted as part of an English speaker’s
vocabulary, we note, in particular, the country name Qatar.
Although we do not rule out other possible pronunciations,
we find that one likely pronunciation is the phonetic
equivalent, KISS.
Next, applicant argues that the term KISS is very weak
overall and, in particular, in this field and should be
given only a limited scope of protection. What is relevant
for our analysis is the evidence pertaining to clothing.
In support of its position, applicant has presented fifty
registrations where the mark includes the word KISS and the
goods include various types of clothing. A close
examination of these third-party registrations reveals that
many have limited probative value on this point. First,
the seven registrations based on foreign registrations
under Section 44 with no claim of use in commerce have no
probative value. In re 1st USA Realty Prof’ls, Inc., 84
USPQ2d 1581, 1583 (TTAB 2007). See Reg. No. 2046135 for
LITTLE KISS (for lingerie and women’s underwear), Reg. No.
2984896 for WITH A KISS FROM THE SWISS (for shirts, tops,
sweatshirts), and Reg. No. 3058711 KISS THAT FROG (for
underwear, sleepwear). Further, in several of the use-
Serial No. 77911197
9
based registrations the word KISS forms part of a phrase,
e.g., KISS MY FACE (for t-shirts and caps),4 KISS & TELL
(for hats, headwear),5 KISS MY FEET (for shoes and
footwear),6 LAST KISS (for sports coats, sports shirts and
sports shirts with short sleeves),7 SEALED WITH A KISS (for
bras, panties, sleepwear, underwear),8 KISS ‘EM GOODBYE (for
t-shirts, tank-tops),9 FIRSTKISS (for t-shirts, shorts,
swimwear),10 KISS ME GOODNIGHT! (for sleepwear and
underwear),11and WAKE ME WITH A KISS (for sleepwear)12.
These phrasings serve to present very different
connotations and commercial impressions. Moreover, many of
these registrations are for clothing items that are
distinctly not underwear, lingerie or sleepwear, e.g.,
footwear, headwear, etc.
Nonetheless, the many registrations containing the
word KISS in the marks for related clothing items do serve
to some extent to limit the scope of protection for the
word KISS for these types of goods. However, as the
examining attorney explains, “the applicant’s mark and the

4 Reg. No. 2706187.
5 Reg. No. 2775931.
6 Reg. No. 2859222.
7 Reg. No. 3298581.
8 Reg. No. 3024972.
9 Reg. No. 3065087.
10 Reg. No. 3121387.
11 Reg. No. 3456083.
12 Reg. No. 3371067.
Serial No. 77911197
10
registrant’s marks are the only two on the Principal
Register that use the repeated sound ‘kiss kiss’ to
identify lingerie, sleepwear, and undergarments.” Br. p.
9.
We find in this case that, to the extent the word KISS
is diluted in this field, it is not so weak to permit
registration of a phonetically identical mark with an
identical repeating structure.
Applicant argues that the addition of its well-known
house mark, along with the difference in appearance and
possibly connotation, depending on the pronunciation of the
word QISS in registrant’s mark, is sufficient to
distinguish the marks. Specifically, applicant argues
that:
[T]he INTERNATIONAL INTIMATES portion of its mark
is, as a result of its continuous use over the
course of two decades, a strong mark entitled to
the broadest scope of protection ...
[a]pplicant’s use of its well-known house mark
cannot be ignored in the likelihood of confusion
analysis ... [and a]s the Board has held several
times, the use of a house mark or other such
matter, may serve to avoid a likelihood of
confusion when the shared matter is highly
suggestive, merely descriptive or commonly used
or registered.

Br. p. 9.

In general, the addition of a house mark to inherently
distinctive matter does not obviate likely confusion and
Serial No. 77911197
11
may in some instances increase likely confusion. In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir.
2010) (ML likely to be perceived as a shortened version of
ML MARK LEES when used on the same or closely related skin-
care products). This case does not present an exception
where the marks in their entireties convey significantly
different commercial impressions or the common matter is
merely descriptive or so diluted that the similarities
presented here would be overshadowed by the house mark.
Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d
1350 (Fed. Cir. 2004) (RITZ and THE RITZ KIDS create
different commercial impressions); Citigroup Inc. v.
Capital City Bank Group, Inc., 94 USPQ2d 1645 (TTAB 2010),
aff’d, 98 USPQ2d 1253 (Fed. Cir. 2011) (CAPITAL CITY BANK
held not likely to be confused with CITIBANK).
Applicant’s assertion that its INTERNATIONAL INTIMATES
mark is well-known also does not help in this effort to
distinguish the marks because purchasers familiar with
registrant’s QISS QISS lingerie upon encountering
applicant’s KISS KISS BY INTERNATIONAL INTIMATES, INC.
lingerie are likely to believe that applicant is the source
of registrant’s QISS QISS products. “[E]ven if this had
been shown to be the case, it would only serve to aggravate
the likelihood of confusion that would arise from the
Serial No. 77911197
12
contemporaneous use of the marks on the respective goods.”
In re Christian Dior, S.A., 225 USPQ 533, 535 (TTAB 1985)
(addition of house mark DIOR to applicant’s LE CACHET DE
DIOR for shirts does not obviate likely confusion with
CACHET for dresses and toiletries). See also In re Chica,
Inc., 84 USPQ2d 1845, 1849 (TTAB 2007) (CORAZON BY CHICA
confusingly similar to CORAZON; “the phrase ‘BY CHICA’ will
simply be viewed as the identification of the previously
anonymous source of the goods sold under the mark
CORAZON”). See also In re Apparel Ventures, Inc., 229 USPQ
225, 226 (TTAB 1986) (SPARKS BY SASSAFRAS and design
confusingly similar to SPARKS).
In applicant’s mark, KISS KISS would be perceived as
the secondary or product mark and the remaining portion BY
INTERNATIONAL INTIMATES as the house mark. There are no
such additional source distinguishing elements in
registrant’s mark and consumers are likely to confuse the
two marks as to source. For those consumers who pronounce
registrant’s mark KISS KISS, the sound and meaning between
the first portion of applicant’s mark and registrant’s mark
are identical, and these similarities outweigh the
differences in appearance. Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005) (consumers generally
Serial No. 77911197
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inclined to focus on the first part of a mark); RE/MAX of
America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB
1980) (similarity in sound alone may be sufficient to
support a finding of likelihood of confusion). Even
viewing the mark QISS QISS, the novel spelling would not
obviate the meaning of KISS once it is pronounced. Based
on these similarities, the marks present an overall similar
commercial impression. We also find that such consumers do
not represent merely a de minimis amount but rather that
many potential consumers would pronounce QISS as KISS.
Thus, viewing the marks in their entireties, we find
that the similarities outweigh the dissimilarities.
In conclusion, we find that because the marks are
similar, the goods, channels of trade and potential
purchasers are legally identical, confusion is likely
between applicant’s mark KISS KISS INTERNATIONAL INTIMATES,
INC. and registrant’s mark QISS QISS. To the extent there
is any doubt, we resolve it, as we must, in registrant’s
favor. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.