Lane Bryant Purchasing Corp.v.Denise Reed

Trademark Trial and Appeal Board

May 7, 2008

No. 91173467 (T.T.A.B. May. 7, 2008)

Mailed: May 7, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Lane Bryant Purchasing Corp.
v.
Denise Reed
_____

Opposition No. 91173467
to application Serial No. 78780714
filed on December 26, 2005
_____

Roberta Jacobs-Meadway of Ballard Spahr Andrews and
Ingersoll, LLP for Lane Bryant Purchasing Corp.

Denise Reed, pro se.
______

Before Rogers, Kuhlke, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Applicant, Denise Reed, seeks registration of the
following mark (in standard character form):
“L.B. Soc”
…for locs, braids & more.

for “headgear, namely, scarves” in International Class 25.1

1 Serial No. 78780714, filed December 26, 2005, alleging a date
of first use on January 10, 2002 under Trademark Act Section
1(a), 15 U.S.C. §1051(a).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91173467
2
Opposer, Lane Bryant Purchasing Corp., has opposed
registration of applicant’s mark on the ground that the mark
so resembles opposer’s previously used and registered mark
LB for a variety of clothing and accessories, including
“scarves,”2 that when applied to applicant’s goods,
“confusion of the relevant public and trade is likely to
result, which will damage and injure opposer.” Opposer also
pleaded ownership of other marks that contain, in part, the
letters LB, and use of such marks in connection with
“women’s wearing apparel and accessories,” but did not
specifically identify any of these marks in the complaint.
Applicant filed an answer wherein she denied a majority
of the allegations, but also made several admissions. Of
importance, applicant states that she “does not contest”
that opposer is the owner of its pleaded registration and
said registration is “valid and subsisting, incontestable
and renewed” (Answer, para. 6); that “opposer has long prior
use in commerce of the mark LB for its women’s wearing
apparel and accessories” (Answer, para. 4); and that
opposer’s “use of the LB marks [has been] continuous and
commercially significant” (Answer, para. 5).

2 Registration No. 1211680 (issued on October 5, 1982) for
“women's, nurses', and children's clothes and accessories-namely,
suits, dresses, shirt waists and skirts for outer and underwear;
sweaters, hats, hosiery, belts, neckties, scarves, shawls, fur
collars, fur muffs, gloves, corsets, and brassieres”; an
assignment to opposer was recorded with the USPTO on June 21,
2005 (at reel 3108/frame 0480).
Opposition No. 91173467
3
Only opposer presented evidence at trial and filed a
trial brief. While there is no indication that applicant
actively defended her application, other than by filing an
answer, we are cognizant of the burden that remains with
opposer, namely, establishing its pleaded case (in this
case, its standing and Section 2(d) ground of opposition) by
a preponderance of the evidence. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
By operation of the rules, the evidence of record in
this case consists of the file of applicant’s involved
application and the pleadings. In addition, opposer has
submitted copies of the trial depositions, with exhibits,
for the following witnesses: Scott Glaser, vice president
of finance for Lane Bryant (a related company of opposer);
John Metzger, a senior legal assistant with Ballard Spahr
Andrews and Ingersoll, LLP (counsel for opposer); and
Kathleen Quickert, director of business management in
marketing for Lane Bryant. And, under notices of reliance,
opposer submitted the following: a recently-issued,
certified status and title copy of opposer’s pleaded
registration; copies of applicant’s responses to opposer’s
interrogatories Nos. 6, 10-12, 15, 18; TARR database copies
of five (5) third-party registrations for marks covering
both headwear and other articles of women’s apparel; TARR
database copies of eight (8) third-party registrations for
Opposition No. 91173467
4
marks covering both retail store services for clothes and
for scarves and similar goods; copies of twenty-two (22)
articles or published matter involving the Lane Bryant name
and mark from newspapers, periodicals and journals; copies
of seventeen (17) articles or published matter from
newspapers, periodicals and journals that purportedly
establish that “the Lane Bryant name and mark are well known
among women of color.”
Because opposer’s pleaded registration is of record, we
find that opposer has established its standing to oppose
registration of applicant’s mark. See Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982); see also Cunningham, 222 F.3d 943, supra.
In addition, Section 2(d) priority is not an issue in
this case as to the mark and goods covered by said
registration because the pleaded registration is of record.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Our likelihood of confusion determination under Section
2(d) 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 and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
Opposition No. 91173467
5
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Although opposer pleaded ownership of marks containing,
in part, the letters “LB” for various items of women’s
apparel and for retail store services, we have focused our
likelihood of confusion analysis solely on the mark and
goods which are the subject of opposer’s pleaded
registration.
We turn first to the second du Pont factor regarding
the similarity of the parties’ goods. Here, applicant’s
identified goods are “headgear, namely, scarves” and the
goods in opposer’s registration include “scarves.” Thus,
the respective marks are used for identical goods.
Furthermore, several other goods identified in opposer’s
pleaded registration, e.g., hats, neckties, shawls, fur
collars, fur muffs, are also closely related to applicant’s
headscarves.
Applicant’s identification of goods is unrestricted as
to the trade channels and classes of purchasers. The
identification of goods in opposer’s pleaded registration is
somewhat narrowed inasmuch as they are prefaced with
“women’s, nurses’ and children’s clothes and accessories,
namely….” And, we must make our findings based on the goods
Opposition No. 91173467
6
as they are recited in the application and registration,
respectively. See Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In
re Elbaum, 211 USPQ 639 (TTAB 1981). We must also presume
that the parties’ goods are marketed in all of the normal
trade channels for such goods, and that the goods are bought
by the usual classes of purchasers. Accordingly, given that
the parties’ goods are, in part, identical and headscarves
are worn primarily by women, it is presumed that they move
in the same trade channels to the same classes of
purchasers. In other words, both applicant’s and opposer’s
scarves will be sold primarily to women through the usual
trade channels, e.g., retail clothing stores, department
stores, through internet or catalog sales, or any other
means by which scarves may be sold.
Lastly, because scarves are relatively inexpensive
articles of clothing, they may be purchased with less
attention or on impulse.
Therefore, the du Pont factors of the trade channels,
as well as the conditions under which and buyers to whom
sales are made, weigh in favor of a finding of likelihood of
confusion.
We now turn our attention to the du Pont factor
involving the similarity of the parties’ marks. In doing
Opposition No. 91173467
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so, we initially note that when the respective marks are
used in connection with identical goods, as they are here
with respect to scarves, “the degree of similarity [between
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).
Under this du Pont factor, we look to the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
The 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 their overall
commercial impressions that confusion as to the source of
the goods/ services offered under the respective marks is
likely to result. The focus is on the perception and
recollection of the average purchaser, who normally retains
a general rather than specific impression of trademarks.
See Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ
537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). In articulating reasons for reaching
a conclusion on the issue of likelihood 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, provided the ultimate conclusion rests on a
Opposition No. 91173467
8
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). For example, merely descriptive matter may be
accorded subordinate status relative to the more distinctive
portions of a mark. In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997).
We find that the dominant feature of applicant’s mark
is the phrase “L.B. Soc” (quotation marks used in
applicant’s mark). As the initial phrase in the mark, “L.B.
Soc” is the part that is most likely to be impressed upon
the mind of a purchaser and will be remembered and used when
calling for the goods. See Presto Products, Inc. v. Nice-
Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). The
quotation marks enclosing this phrase also provide added
emphasis or highlight this portion. As to the latter phrase
“…for locs, braids & more” (quotation marks not forming part
of the mark), it appears a line below and will be perceived
as merely describing some of the intended uses of
applicant’s scarves, i.e., that they are suitable for
particular hairstyles.
Opposer goes further and argues that “Soc” is a
“generic term which does not add to distinguish
[applicant’s] mark.” Brief, p. 9. In support of this
contention, opposer relies on applicant’s response to
Interrogatory No. 18 wherein she states that “the slang
Opposition No. 91173467
9
spelling ‘Soc’ is the accepted African-American venacular
(sic) used to identify ethnic use hair grooming coverings.”
While this statement alone, albeit made by applicant
herself, is insufficient for us to conclude that the term
“Soc” is generic for head scarves, this evidence is
sufficient to support a finding that the term SOC is at
least perceived by applicant as suggestive of the goods, may
also be so perceived by consumers, and has less source
indicating significance than the letters “L.B.”.
In sum, we find that the dominant feature of
applicant’s mark is the phrase “L.B. Soc”, and that this
phrase is highly similar to opposer’s mark, LB, in sound,
appearance, connotation and overall commercial impression.
Even upon considering the marks as a whole, as we must, we
find the similarity between the marks which results from the
presence of the letters L.B. or LB outweighs any possible
distinguishing features.
Accordingly, as to similarity of the marks, this du
Pont factor favors opposer.
Balancing all of the du Pont factors for which there is
evidence of record, we find that a likelihood of confusion
exists.
Decision: The opposition is sustained and registration
to applicant is refused.