Marcraft Clothes, Inc.

Trademark Trial and Appeal Board

Mar 2, 2005

No. 78142544 (T.T.A.B. Mar. 2, 2005)

Mailed:03/02/05

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Marcraft Clothes, Inc.
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Serial No. 78142544
_______

Ira E. Silfin of Amster, Rothstein & Ebenstein LLP for
Marcraft Clothes, Inc.

Jennifer M. Martin, Trademark Examining Attorney, Law
Office 116 (Meryl Hershkowitz, Managing Attorney).
_______

Before Quinn, Chapman and Drost, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:

On July 10, 2002, Marcraft Clothes, Inc. (a New York
corporation) filed an application to register on the
Principal Register the mark EAGLE for “men’s tailored
clothing, namely, suits, sport jackets, coats and slacks.”
The application is based on applicant’s assertion of a bona
fide intention to use the mark in commerce.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to its
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78142544
2
identified goods, so resembles two registered marks, both
currently owned by Phillips-Van Heusen Corporation through
assignment, and both for the mark EAGLE, Registration No.
110603 issued June 6, 1916 (renewed to 2006) for “woven
dress-shirts, negligee shirts, and undershirts, drawers,
and sleeping garments,” and Registration No. 986469 issued
June 18, 1974 (renewed to 2014) for “shirts, swim trunks,
sweaters and neckties,” as to be likely to cause confusion,
mistake or deception.1
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
Our determination under Section 2(d) is based on an
analysis of all of the 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 & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard

1 The Examining Attorney originally cited six registrations under
Section 2(d) of the Trademark Act. Applicant successfully
petitioned to cancel four of the six registrations.
(Cancellation No. 92040797, Marcraft Clothes, Inc. v. Cliftex
Corporation)
Ser. No. 78142544
3
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
The Examining Attorney correctly argues that
applicant’s mark and the two cited registered marks are
identical. Therefore, the marks are not only similar, but
are identical in sound, appearance, connotation and overall
commercial impression. This fact “weighs heavily against
applicant.” In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984). Indeed,
the fact that an applicant has selected the identical mark
of a registrant “weighs [so] heavily against the applicant
that applicant’s proposed use of the mark on “goods...
[which] are not competitive or intrinsically related [to
registrant’s goods]...can [still] lead to the assumption
that there is a common source.” In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir. 1993).
“The greater the similarity in the marks, the lesser the
similarity required in the goods or services of the parties
to support a finding of likelihood of confusion.” 3 J.
McCarthy, McCarthy on Trademarks and Unfair Competition,
§23:20.1 (4th ed. 2001).
Applicant contends that the cited mark is weak and
argues specifically as follows:
Ser. No. 78142544
4
Because the EAGLE element shared by
Applicant’s Mark and the Cited Marks is
weak and has been diluted by third [-]
party use in the clothing field,
confusion as to source or origin is not
likely;

As indicated in the attached print-out
from the [private] online database
(Attached A), there are numerous
existing registrations, in
International Class 25 for clothing,
which incorporate the EAGLE element
including: [applicant then shows a
typed list of 28 third-party
registrations which include the word
EAGLE];

These marks illustrate the narrow scope
of protection afforded the Cited Marks
and the recognition given by the
Trademark Office of the public’s
ability to distinguish among close
marks in this area (brief, pp. 2-3);
and

Third[-]party uses and registrations
can also provide evidence that the
consumers of the goods in question are
accustomed to distinguishing between
similar goods and similar marks, and
are less likely to be confused (brief,
p. 6).

Procedurally, regarding applicant’s “Attached A”
(filed with its response dated April 24, 2003), applicant
did not provide proper copies of any of the referenced
third-party registrations/applications from the USPTO’s
database, but rather applicant’s printouts are from a
private online database. See In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24
Ser. No. 78142544
5
USPQ2d 1230 (TTAB 1992); and In re Duofold Inc., 184 USPQ
638 (TTAB 1974). However, because the Examining Attorney
did not object to this evidence, and in fact, she discussed
the material on the merits, the Board considers all of the
references (applicant’s “Attached A” and applicant’s typed
list of 28 registrations) stipulated into the record.2
One of the third-party registrations from applicant’s
typed list is not in the printouts from the private online
database and it is not for goods in International Class 25.
(Registration No. 2677145 for the word “eagle” in lower
case and in stylized lettering is for various hockey
sporting goods in International Class 28.) In addition,
with only five exceptions,3 all of the remaining marks both
in the printouts and in applicant’s typed list are for
marks with the word EAGLE and at least one other word (for

2 We note that the private database listings do not include the
registration number and/or the application serial number, the
register the mark appears on (Principal or Supplemental), whether
the registration and/or application is currently live or not,
etc. Also, third-party applications have virtually no probative
value on the issue of registrability, as pending applications are
evidence only of the fact that an application was filed on a
particular date.
3 Of the five exceptions, one registration is for sporting goods
(as explained earlier herein), two are for the term “eagle” in a
foreign language and each with a design feature (Registration
Nos. 1421201 and 1460886), one is for the mark EAGLES and the
identification of goods specifically recites clothing items
“relating to the music group ‘The Eagles’” (Registration No.
2161179), and one is for the mark EAGLES and design and is owned
by the University System of Georgia (Registration No. 1697700).
Ser. No. 78142544
6
example, EAGLE CANYON, EAGLE POINT, BLUE EAGLE, GREEN
EAGLE, SCREAMIN’ EAGLE).
Most importantly, third-party registrations do not
establish that the marks shown therein are in use, much
less that consumers are so familiar with them that they are
able to distinguish among such marks. There is no evidence
of record of any use by any party (including applicant, the
cited registrant or any third-party) of any mark including
the word EAGLE for clothing.
To the extent applicant is arguing that inconsistent
actions were taken by Examining Attorneys, the record
history of each of the two cited registrations as well as
the records of the third-party registrations are not before
us. Moreover, neither the Board nor any Court is bound by
prior decisions of Trademark Examining Attorneys, and each
case must be decided on its own merits, on the basis of the
record therein. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001). See also, In re
Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001).
Furthermore, even weak marks are entitled to
protection against registration by a subsequent user of the
same or similar mark for the same or related goods. See
Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439
(TTAB 1976).
Ser. No. 78142544
7
Turning next to a consideration of the goods involved
in this case, we start with the well-settled principle that
the question of likelihood of confusion in Board
proceedings regarding the registrability of marks, must be
determined based on an analysis of the goods or services
identified in applicant’s application vis-a-vis the goods
or services recited in the registration. See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987). Further, it is also well settled that
goods or services need not be identical or even competitive
to support a finding of likelihood of confusion. Rather,
it is enough that the goods or services are related in some
manner or that the circumstances surrounding their
marketing are such that they would likely be seen by the
same persons under circumstances which could give rise,
because of the marks used therewith, to a mistaken belief
that they emanate from or are in some way associated with
the same producer or that there is an association between
the producers of each party’s goods or services. See In re
Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992); and In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Ser. No. 78142544
8
In this case, applicant’s identified goods are “men’s
tailored clothing, namely, suits, sport jackets, coats and
slacks” and registrant’s identified goods are “woven dress-
shirts, negligee shirts, and undershirts, drawers, and
sleeping garments” and “shirts, swim trunks, sweaters and
neckties.” Clearly, these are not identical items of
clothing. The Examining Attorney argues that these goods
are closely related and she submitted into the record
printouts of pages from a few third-party websites (e.g.,
Jos. A Bank, The Foursome, Land’s End) showing that these
entities offer tailored men’s clothing, including suits,
shirts and ties.
Based on the record, we find that applicant’s men’s
tailored clothing items (particularly the “suits,” “sport
jackets” and “slacks”) and registrant’s clothing items
(particularly the “woven dress-shirts,” “shirts” and
“neckties”) are related goods. See Hewlett-Packard Company
v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002)(“even if the goods and services in
question are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin of the goods and services”).
Ser. No. 78142544
9
The respective goods, as identified, would be sold in
the same or at least overlapping channels of trade to the
same or overlapping classes of purchasers.
With regard to the conditions of sale du Pont factor,
applicant contends that its identified clothing items are
expensive; that applicant’s goods will be purchased with
the assistance of a sales associate or an in-house tailor,
while the cited registrant’s goods will be purchased self-
serve off the shelf; and that purchasers will use a high
degree of care in selecting tailored clothing. However,
applicant submitted no evidence relating to (i) the cost of
either its own goods or those of the cited registrant; (ii)
the respective asserted methods of sale (off the shelf or
through a sales associate or tailor); and (iii) consumers’
purchasing decisions with regard to tailored clothing.
Even if we assume that applicant’s goods are expensive and
are purchased with sales assistance and only with care, we
are not convinced on this record that purchasers will be
immune from confusion as to source, where, as here,
identical marks are applied to closely related products.
See In re Hester Industries, Inc., 231 USPQ 881 (TTAB
1986).
In view of the fact that applicant’s EAGLE mark is
identical to registrant’s mark, and the goods are closely
Ser. No. 78142544
10
related (e.g., “men’s tailored suits” and “shirts”), with
the same or overlapping channels of trade and purchasers,
we find that applicant’s mark for its identified goods is
likely to cause confusion with the mark in the cited
registrations.
Finally, any doubt on the question of likelihood of
confusion must be resolved against the newcomer as the
newcomer has the opportunity to avoid confusion, and is
obligated to do so. See TBC Corp. v. Holsa Inc., 126 F.3d
1470, 44 USPQ2d 1315 (Fed. Cir. 1997); and 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.