L.C. Licensing, Inc.

Trademark Trial and Appeal Board

Jul 30, 2001

No. 75914519 (T.T.A.B. Jul. 30, 2001)

7/30/01

Paper No. 11
GFR

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re L.C. Licensing, Inc.
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Serial No. 75/914,519
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David B. Kirschtein of Kirschtein, Ottinger, Israel &
Schiffmiller, P.C. for L.C. Licensing, Inc.

Tami Cohen Belouin, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______

Before Hohein, Walters and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

L.C. Licensing, Inc. has filed an application to
register the mark ELISABETH for goods identified, following
amendment, as “sleepwear, namely nightgowns, pajamas,
sleepshirts, bedjackets and robes designed for women
requiring larger sizes.”1 The Examining Attorney refused
registration of applicant’s mark under Section 2(d) of the

1 Serial No. 75/914,519, filed February 10, 2000, asserting
applicant’s bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/914,519
2
Lanham Act, 15 U.S.C. §1052(d), because of the prior
registration of ELIZABETH for “women’s hosiery.”2
When the Examining Attorney made the refusal of
registration final, applicant appealed. Both applicant and
the Examining Attorney have filed briefs, but an oral
argument was not requested.
It is the Examining Attorney’s position that
registration must be refused under Section 2(d) because
there is a likelihood that consumers of the respective
goods would be confused or mistaken as to their source or
sponsorship, if marketed contemporaneously under the
respective marks. Applicant contends there is no
likelihood of confusion or mistake.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion presented by this case,
key considerations are the virtually identical nature of
the marks, the related nature of the goods, and the
presumptively similar classes of consumers for these goods.

2 Registration No. 2,001,669 issued September 17, 1996, and lists
dates of first use and first use in commerce of July 1, 1983.
Ser No. 75/914,519
3
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Considering the marks, we note that applicant does not
argue that the marks are different in sound or connotation
and concedes in its brief that “[t]he use of an ‘s’ instead
of a ‘z’ in applicant’s mark has never been urged as a
difference.” Further, we must remain mindful that the
average purchaser of the involved goods normally would
retain a general, rather than a specific, impression of the
marks and that there is a certain fallibility of memory.
See Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); and Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d
unpub’d (Fed. Cir., June 5, 1992). Thus, the virtually
identical nature of the marks is a factor that militates
strongly in favor of a finding that confusion is likely.
Turning to the goods, we note that our analysis of the
similarity or relatedness of the goods, their channels of
trade and their classes of consumers must be based on the
identifications in the involved application and
registration. See Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990), and Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490, 1
Ser No. 75/914,519
4
USPQ2d 1813, 1815-16 (Fed. Cir. 1987). Moreover, in the
absence of restrictions, we must presume that the
identified goods move in all normal channels of trade and
to all usual classes of consumers therefor. See CBS Inc.
v. Morrow, 218 USPQ 198, 199 (Fed. Cir. 1983).
Applicant has restricted its items of women’s
sleepwear to those “designed for women requiring larger
sizes,” and argues that this is significant; but the cited
registration is for women’s hosiery without restriction,
which is more significant. We must consider the hosiery in
the cited registration to encompass hosiery for women
requiring larger sizes. Thus, the goods must be presumed,
based on the identifications, to be marketed to at least
some of the same consumers, i.e. women requiring larger
sizes.
Applicant also argues that the involved goods are not
complementary, since a “women [sic] might well wear a
jacket and hosiery, but it is hardly likely that she would
wear hosiery with sleepwear.” It is well settled, however,
that goods marketed under virtually identical marks need
not be competitive or complementary for a likelihood of
confusion to exist. They only need to be of the type that
consumers may conclude there is a relationship, as for
example, origination in the same source, or common
Ser No. 75/914,519
5
sponsorship. See In re Concordia International Forwarding
Corp., 222 USPQ 355, 356 (TTAB 1983) (“If the marks are the
same or almost so, it is only necessary that there be a
viable relationship between the goods or services in order
to support a holding of likelihood of confusion.”).
The Examining Attorney has made of record voluminous
evidence that women’s hosiery and sleepwear can emanate
from the same source under the same mark. See In re Albert
Trostel & Co., 29 USPQ2d 1783, 1786 (TTAB 1993) (Third-
party registrations listing goods of an applicant and a
registrant whose registration has been cited against the
applicant’s application are probative evidence that such
goods may emanate from a single source under the same
mark.). In fact, the Examining Attorney contends that
applicant itself uses the same mark, albeit not the mark in
the involved application, for sleepwear and hosiery.3 The
relevance of this evidence is not, as applicant apparently
believes, related to the question whether applicant will
eventually expand its use of its involved mark to cover
women’s hosiery, but whether sleepwear and hosiery are the
types of goods which consumers will believe emanate from a
single source or sponsor when marketed under the same mark.

3 Applicant concedes that it has registered the mark FIRST ISSUE
for apparel items including hosiery.
Ser No. 75/914,519
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We find the goods related and targeted to at least
some of the same consumers. Also, since there are no
restrictions as to channels of trade, we must presume that
marketing of the goods to these common consumers may be
through the same channels of trade.
In sum, when we consider the two du Pont factors that
are usually the most important, i.e., the similarity or
dissimilarity in the marks and the relatedness or lack
thereof of involved goods or services, our conclusion is
that a likelihood of confusion exists. These two factors,
however, are not the only factors to be considered in this
case.
Without explicitly saying so, applicant essentially
contends that several other du Pont factors come into play
in this case. Specifically, it appears applicant is
relying on “the length of time during and the conditions
under which there has been concurrent use without evidence
of actual confusion,” “the market interface between
applicant and the owner of a prior mark,” and “any other
established fact probative of the effect of use.” du Pont,
supra, 177 USPQ at 567.
Applicant asserts that it “has been using the mark
ELISABETH alone or in combination [with “A LIZ CLAIBORNE
COMPANY” or “LIZ CLAIBORNE INC” or “BY LIZ CLAIBORNE”] for
Ser No. 75/914,519
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various items of wearing apparel for women’s [sic]
requiring larger sizes since 1988.” Further, applicant
asserts that because its goods do not include hosiery, “no
conflicts whatsoever have been experienced in the
marketplace.” Applicant does not, however, explicitly
state that it is not aware of any instances of actual
confusion.
We cannot assume that applicant’s report of “no
conflicts” should be taken to mean there are no known
instances of actual confusion. It may mean simply that
applicant perceives the goods of the parties as unrelated
and, therefore, it has not experienced any competitive
conflicts with registrant. Moreover, even if we were to
accept applicant’s representation as meaning that applicant
has not experienced instances of actual confusion, we find
the contention of limited probative value, as we have
little information about the extent of use of the
respective marks and, therefore, the extent of
opportunities for confusion to arise. Cf. Cooper
Industries, Inc. v. Repcoparts USA Inc., 218 USPQ 81, 85-86
(TTAB 1983) (apparent absence of actual confusion of
minimal value given only brief history of contemporaneous
use and insufficient record on subject of use).
Ser No. 75/914,519
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In addition, we have no information from registrant
regarding any instances of confusion of which it may be
aware. Finally, there is nothing in the record tending to
corroborate applicant’s presumptive report that there has
been no actual confusion, as would be present, for example,
if applicant had presented us with a consent agreement
between the parties. Thus, the “actual confusion” factor
does not aid applicant.
In regard to the “market interface” factor, while our
reviewing court has directed that our Section 2(d) analysis
consider registrant’s goods as theoretically traveling in
all normal channels of trade to all possible classes of
consumers, we must still consider the actual marketplace
interface if we are provided with probative evidence of the
same. Applicant, however, has not made of record any
information which would aid our determination as to whether
this factor militates in favor of, or against, finding a
likelihood of confusion.
Finally, we come to the du Pont factor of “any other
established fact probative of the effect of use.” In this
regard, applicant recounts how it obtained certain of its
ELISABETH/LIZ CLAIBORNE mark registrations, for various
items of women’s apparel, prior to issuance of the cited
registration. Applicant also notes that it obtained
Ser No. 75/914,519
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another registration for one of these combination marks, as
well as two registrations for ELISABETH alone, all for
various items of women’s apparel, after issuance of the
cited registration. Applicant asserts that “neither the
applicant nor the cited registrant has opposed an
application by the other party—nor sought to cancel a
regstration of the other party….” Though it has not said
it in so many words, we presume applicant to be asserting
that the parties do not view the effect of their uses of
their respective marks as likely to involve confusion and,
therefore, neither has challenged the other’s attempts to
obtain registrations. Again, however, there is no evidence
to support applicant’s argument. Applicant does not allege
that the parties have ever discussed their respective uses;
or allege that their respective applications and
registrations have gone unchallenged because of any
agreement or understanding.
We note that the cited registration at least claims
dates of first use prior to any date claimed by applicant
in its registrations or in the involved application; this
may explain applicant’s apparent decision not to challenge
the cited registration. Also, while applicant’s
registrations provide legal notice to the owner of the
cited registration, there is no information of record upon
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which we could conclude that registrant has actual notice
of applicant, its activities and its registrations, so that
we could accept applicant’s contention that registrant has
chosen not to challenge applicant’s applications or
registrations. Thus, the “any other established fact
probative of the effect of use” factor also does not aid
applicant.
In short, the two du Pont factors of the similarity of
the involved marks and relatedness of the involved goods
strongly militate in favor of a finding of likelihood of
confusion; and we have no probative evidence on which we
could resolve any of these additional du Pont factors in
applicant’s favor. Thus, we find that there is a
likelihood of confusion and that the refusal of
registration must be affirmed.
We cannot, however, close without briefly noting
applicant’s equitable arguments. Applicant argues that a
basic principle of the Lanham Act is that the register
established thereby should reflect “the realities of the
marketplace” and the statute encourages registration. We
readily concede the existence of the principle, but note
that Section 2(d) of the statute bars registration when use
of the mark proposed for registration would likely result
in confusion or mistake among consumers.
Ser No. 75/914,519
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Another point made by applicant concerns the apparent
inequality of treatment of its applications by the Office.
In essence, applicant argues that use of its mark for the
involved goods is no more likely to cause confusion or
mistake than is use of that mark for other goods and
services that already are the subject of issued
registrations. We do not pretend to be able to explain the
processing and examination of each of applicant’s
applications; nor is it our responsibility to do so in this
appeal from the refusal of the involved application. We
are constrained to review the record before us insofar as
it bears on the various du Pont factors. See In re Nett
Designs Inc., 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
(“Needless to say, this court encourages the PTO to achieve
a uniform standard for assessing registrability of marks.
Nonetheless, the Board (and this court in its limited
review) must assess each mark on the record … submitted
with the application.”). Having done so, we find that
there exists a likelihood of confusion or mistake among
consumers. We cannot set that conclusion aside because of
general equitable arguments, even if we were to find them
compelling.
Decision: The refusal of registration is affirmed.