La Rue Distributors, Inc.

Trademark Trial and Appeal Board

Mar 12, 2003

No. 76140920 (T.T.A.B. Mar. 12, 2003)

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re La Rue Distributors, Inc.
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Serial No. 76/140,920
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Mark P. Stone, Esq. for La Rue Distributors, Inc.
Sonya B. Stephens, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
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Before Hanak, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
La Rue Distributors, Inc. (applicant) seeks to
register BA·NY in the form shown below for “diaper
backpacks, diaper bags, diaper fanny packs and infant
carriers in the nature of straps worn on the body.” The
application was filed on October 4, 2000 with a claimed
first use date of November 19, 1998.
Ser. No. 76/140,920
2
Citing Section 2(d) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the mark BA, previously
registered in the form shown below for, among other goods,
“backpacks.” Registration No. 1,363,001.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
Ser. No. 76/140,920
3
differences in the essential characteristics of the goods
and differences in the marks.”).
Considering first the goods, we note that they are, in
part, legally identical. Applicant’s goods include “diaper
backpacks.” The goods of the cited registration include
“backpacks.” Obviously, the word “backpack” is broad
enough to include all types of backpacks, including “diaper
backpacks.”
Considering next the marks, we note at the outset that
when the goods are legally identical, as is the case here,
“the degree of similarity [of the marks] necessary to
support a conclusion of likely confusion declines.”
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Applicant’s mark incorporates the letters BA of the
registered mark, and then adds to these letters the letters
NY, which applicant has conceded to be descriptive of its
goods. In this regard, we note that in the first Office
Action dated March 27, 2001, the Examining Attorney stated
that “applicant must disclaim the descriptive wording NY.”
In response, applicant stated that “no claim is made to the
exclusive right to use NY apart from the mark as shown.”
At page 5 of its brief, applicant correctly notes that
“in determining likelihood of confusion, marks must be
Ser. No. 76/140,920
4
evaluated and compared in their entireties.” Citing In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 750 (Fed.
Cir. 1985). However, what applicant fails to note is that
the Court in National Data went on to state that “on the
other hand, in articulating reasons for reaching a
conclusion on the issue of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark.” National Data, 224 USPQ at 251. Continuing, the
Court in National Data stated that the fact “that a
particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark.”
National Data, 224 USPQ at 751.
Given the fact that applicant has conceded that NY
portion of its mark is merely descriptive of its goods,
there is nothing improper in giving less weight to that
portion of applicant’s mark, and giving more weight to the
BA portion of applicant’s mark. As previously noted, the
BA portion of applicant’s mark involves the identical
letters of the registered mark BA. The only difference is
that in applicant’s mark the letters BA are perfectly
horizontal whereas in the registered mark the letters BA
Ser. No. 76/140,920
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are positioned such that the letter B is slightly elevated
above the letter A.
We find that a consumer familiar with registrant’s BA
backpacks, would, upon encountering applicant’s BA·NY
diaper backpacks, assume that both backpacks originated
from a common source. In our judgment, consumers would
view the NY portion of applicant’s mark as merely
indicating that the diaper backpacks were designed in or
manufactured in New York City. This is particularly true
when one recognizes that backpacks, including diaper
backpacks, are relatively inexpensive items purchased by
ordinary consumers exercising minimal care.
Of course, it need hardly be said that to the extent
that there are doubts on the issue of likelihood of
confusion, said doubts must be resolved in favor of the
registrant. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1691 (Fed. Cir. 1993).
Decision: The refusal to register is affirmed.