Neige, Inc.

Trademark Trial and Appeal Board

Feb 21, 2008

No. 78536420 (T.T.A.B. Feb. 21, 2008)

Mailed:
February 21, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Neige, Inc.
________

Serial No. 78536420
_______

Lynne M.J. Boisineau of J. Mark Holland & Associates, a
Professional Law Corporation, for Neige, Inc.

Evelyn Bradley, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Hohein, Bucher and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Neige, Inc. (applicant) has applied to register the
mark neige in standard characters for goods now identified
as “children's better-wear, namely dresses, tops, skirts,
tailored jackets, pants, sweaters, hosiery, footwear, hats,
scarves, swimwear, nightwear, and undergarments” in
International Class 25.1 The applicatioon states: “The

1 Application Serial No. 78536420, filed December 21, 2004,
claiming first use of the mark anywhere on September 12, 2003 and
first use of the mark in commerce on November 5, 2003.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78536420
2
foreign wording in the mark translates into English as
snow.”
The Examining Attorney has finally refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), based on a likelihood of confusion with
Registration No. 2561060 for the mark shown here:

for goods identified as “rucksacks, backpacks, all purpose
sport bags, handbags, wallets, purses” in International
Class 18 and “jackets, wind resistant jackets, blazers,
tracksuits, sweaters, polar linings, long trousers, ski
wear, gloves, socks, neckwear, footwear, head wear” in
International Class 25. The registration includes the
following statements: “The wording ROC NEIGE is in the
color red; its outline is in the color dark blue. The
rectangle outline, the semi-round outline and the mountain
and its outline are in the color dark blue. The background
between the semi-outline and the mountain outline is in the
color blue.” and “The wording ROC NEIGE is in the color
Serial No. 78536420
3
red; its outline is in the color dark blue.”2 The
registration issued on April 16, 2002 under Trademark Act
Section 44(e), 15 U.S.C. § 1126(e), based on Registration
No. 2148515 in Spain.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
I. PROCEDURAL MATTERS
In its reply brief, applicant raises a number of
procedural questions and objections.
First, applicant questions whether the Examining
Attorney had considered certain exhibits applicant provided
through a remand in the case. Applicant states, “…
Applicant is unable to determine if the Examining Attorney
did indeed consider such exhibits, as the Examining
Attorney merely reiterates her own position that ‘said
evidence has no bearing on the issue of likelihood of
confusion.’” Applicant’s Reply Brief at 1. Applicant
adds, “… it remains unclear whether (1) the Examining
Attorney treated that evidence as if it is of record, but
was ultimately unpersuasive, or (2) instead declined to

2 It appears that the printing of both statements, which are
redundant, may have been an error. This circumstance does not
affect our determination in this case.

Serial No. 78536420
4
make the evidence of record because she believed it was
irrelevant.” Id. at 2.
First, based on our review of the full record, we are
confident that the Examining Attorney gave appropriate
consideration to the evidence. Furthermore, we have
likewise given appropriate consideration to the evidence in
this appeal. Before discussing that evidence, and why we,
like the Examining Attorney, have found it not relevant or
otherwise not probative or persuasive, we confirm that it
is of record. The Board generally takes a liberal view of
the admissibility of evidence in ex parte appeals. See
generally Trademark Trial and Appeal Board Manual of
Procedure (TBMP) § 1208 (2d ed. rev. 2004). We rarely
exclude evidence on the ground that it is irrelevant in an
ex parte appeal, and we have not excluded applicant’s
evidence here.
Applicant’s evidence consists of listings of results
from the Yahoo search engine. The purpose of the evidence
apparently is to show: (1) that most of the results
related to a search for ROC NEIGE relate to parties other
than the registrant; (2) that the ninth result from an
advanced search limited to the United States for NEIGE
relates to applicant and that another sponsored link from
the advanced search relates to a retailer which carries
Serial No. 78536420
5
applicant’s products; and (3) that an advanced search for
ROC NEIGE, apparently also limited to the United States,
yielded only 45 results, none of which were in English.
In all instances applicant’s evidence presented on
remand is limited to listings of results. The Board has
held that, in general, listings of search results from
search engines, which merely provide links with only brief,
truncated excerpts from the web site, have limited
probative value. In re International Business Machines
Corp., 81 USPQ2d 1677, 1679 n.3 (TTAB 2006). See also TBMP
§ 1208.03 (2d ed. rev. 2004). That is true of all of the
evidence applicant submitted on remand; it is of limited,
if any, probative value.
More importantly, to the extent that the evidence is
intended to show that the registrant has not used its mark
in the United States, it is not relevant. As we noted
above, the cited registration issued under Trademark Act
Section 44(e) based on a registration in Spain. Under that
provision, the registrant is not required to use its mark
in commerce (in the United States) to secure registration.3
See Crocker National Bank v. Canadian Imperial Bank of

3 However, the requirements for filing affidavits of use in
commerce under Trademark Act Section 8, 15 U.S.C. § 1058, to
maintain a registration apply to all registrations, including
Section 44(e) registrations.

Serial No. 78536420
6
Commerce, 223 USPQ 909 (TTAB 1984). See generally
Trademark Manual of Examining Procedure, Chapter 1000 (5th
ed. 2007). Accordingly, for the purposes of this
proceeding, we must and do treat the cited registration as
we would any other cited registration.
Furthermore, attacks on the validity of registrations,
including attacks based on nonuse or abandonment, are not
permitted in an ex parte appeal proceeding. In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35
(Fed. Cir. 1997). Accordingly, applicant’s implication
that we should disregard the cited registration because
applicant was not able to find evidence of the registrant’s
use of the cited mark in the United States is an
impermissible collateral attack on the validity of the
registration which we have not considered further.
Also, to the extent applicant intends to use this
evidence to show that the registrant’s use of its mark is
restricted in some manner, including to certain trade
channels, and those limitations are not specified in the
registration, we cannot consider such evidence. In re
Bercut-Vandervoort & Co., 229 USPQ2d 763, 764 (TTAB 1986).
Therefore, we will not consider such arguments based on
this evidence.
Serial No. 78536420
7
In its reply brief applicant has also objected to new
evidence which the Examining Attorney submitted in her
reply to applicant’s submission of its evidence on remand.
The purpose of the evidence is to show that the goods of
applicant and registrant are related. Specifically,
applicant objects to the Examining Attorney’s reference to
a web site which the Examining Attorney had not previously
referenced.
We first note that in the reply in question the
Examining Attorney has merely provided three web addresses.
The Examining Attorney did not provide printouts of any
material from any of the three web sites with the
submission. We will not consider any evidence offered in
this form. It is not properly of record. In re
Planalytics Inc., 70 USPQ2d 1453, 1457 (TTAB 2004).
Accordingly, we have not considered any evidence related to
any of these web sites, unless actual printouts had been
previously made of record. In the case of two of the web
sites, the Examining Attorney had previously submitted
printouts of certain materials from those. Although we
have considered that evidence, even that evidence was not
necessary to any determination we have made in this case
for reasons discussed below.
Serial No. 78536420
8
II. Likelihood of Confusion
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods of
the applicant and registrant. 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 differences in the
essential characteristics of the goods and differences in
the marks.”). Below we will consider each of the factors
as to which applicant or the Examining Attorney presented
arguments or evidence.
A. The Goods and Channels of Trade
The goods of applicant and the registrant need not be
identical to find likelihood of confusion under Section
2(d) of the Trademark Act. They need only be related in
such a way that the circumstances surrounding their
Serial No. 78536420
9
marketing would result in relevant consumers mistakenly
believing that the goods originate from or are associated
with the same source. See On-Line Careline Inc. v. America
Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir.
2000); In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the goods we must consider
the goods as identified in the application and cited
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application [and registration] regardless of
what the record may reveal as to the particular nature of
an applicant’s goods, the particular channels of trade or
the class of purchasers to which the sales of goods are
directed.”) See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods.”).
Applicant argues at some length that its goods differ
from those in the cited registration, and that the channels
Serial No. 78536420
10
of trade for the respective goods also differ. Applicant
argues that the registrant’s goods are “clothing for
skiers” and that the consumers for registrant’s goods are
“only those people who ski, or require clothing suitable
for winter climates.” Applicant’s Brief at 8-9. As to its
own goods applicant states, “Most, if not all, of
Applicant’s goods are directed at children regardless of
whether they ski or not, and the goods are generally not
for use while skiing.” Id. at 9. Applicant also argues
that registrant’s goods would be sold through sporting
goods stores, while its goods are “high-end fashion items
for children that are sold through appropriate specialty
shops or boutiques.” Id. The Examining Attorney argues
that the goods are, at least in part, identical and that
they share common trade channels.
The distinctions which applicant attempts to draw
between its goods and those in the cited registration are
based entirely on extraneous evidence or mere assumptions
not reflected in the identifications of goods in the
application and cited registration. Accordingly, we may
not consider and have not considered these distinctions in
our comparison of the goods and channels of trade in this
case.
Serial No. 78536420
11
Applicant identifies its goods as “children's better-
wear, namely dresses, tops, skirts, tailored jackets,
pants, sweaters, hosiery, footwear, hats, scarves,
swimwear, nightwear, and undergarments.” The goods
identified in the cited registration are “jackets, wind
resistant jackets, blazers, tracksuits, sweaters, polar
linings, long trousers, ski wear, gloves, socks, neckwear,
footwear, head wear.”4
While applicant limits all of its goods to “children’s
better-wear,” there is no corresponding limitation, for
example, “clothing for men and women” or “clothing for
skiers,” in the cited registration. Therefore, we conclude
that the goods in the cited registration include items for
children, as well as adults, and not just ski clothing.
Although the cited registration identifies “ski wear,”
it is merely one of many items in a list and does not serve
to limit the other items listed in the cited registration.
Accrdingly, we reject applicant’s argument that the goods
in the cited registration are all limited to clothing for
skiers.

4 For purposes of our analysis, we need not and will not discuss
the Class 18 goods in the cited registration. The Class 25 goods
are more relevant.

Serial No. 78536420
12
Also, if applicant intended to limit its goods to
high-end or more expenisve goods by specifying “better-
wear,” we also conclude, in the absence of any limitation
as to quality in the cited registration, that the goods in
the cited registration also include “better-wear” as well
as items which are not “better-wear.” Accordingly,
applicant’s limitation of its goods to “children’s better-
wear” in no way distinguishes its goods from those
identified in the cited registration.
Both the cited registration and application identify
the identical item – “footwear.” The “head wear“
identified in the cited registration encompasses the “hats”
identified in the application. The “jackets” identified in
the cited registration encompass the “tailered jackets”
identified in the application. The “neckwear” identified
in the cited registration encompasses the “scarves”
identified in the application. The “long trousers”
identified in the cited registration overlap with the
“pants” identified in the application. The “socks”
identified in the cited registration overlap with the
“hosiery” identified in the application. These examples
illustrate that the goods are, at least in part and
arguably in larger part, identical or overlapping.
Serial No. 78536420
13
For completeness we also note that the remainder of
the goods identified in the cited registration and the
application are the types of good which have previously
been found related. See, e.g., Jockey Intl., Inc. v.
Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992);
In re Pix of America, Inc., 225 USPQ 691, 692 (TTAB 1985)
and cases cited therein. Accordingly, we conclude that the
goods in the cited registration and the application are, at
least in part, identical or overlapping, and otherwise
related.
Also, in view of the fact that the goods are, at least
in part, identical or overlapping, we also conclude that
the channels of trade for the goods are necessarily the
same or overlapping. Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
B. The Marks
As a starting point we observe that, in cases such as
this, where some of applicant’s goods are identical to some
of the goods identified in the cited registration, the
degree of similarity between the marks which is required to
support a finding of likelihood of confusion is less than
it would be if the goods were not identical. Century 21
Serial No. 78536420
14
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992).
Furthermore, in comparing the marks we must consider
the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
While we must also consider the marks in their
entireties, it is entirely appropriate to accord greater
importance to the more distinctive elements in the marks.
As the Court of Appeals for the Federal Circuit observed,
“… 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, provided the
ultimate conclusion rests on consideration of the marks in
their entireties. Indeed, this type of analysis appears to
be unavoidable.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Furthermore, “… it is well established that the test
to be applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
Serial No. 78536420
15
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.” Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975) (internal citations
omitted).
Applicant argues that the marks differ. Applicant
states, “Even on a first casual review, but especially when
Applicant’s mark and the Registrant’s mark are considered
in their entireties, they are significantly dissimilar.”
Applicant’s Brief at 4. Applicant continues, “The mere
similarity of the word “NEIGE” does not make the marks
confusingly similar as the “ROC NEIGE” design mark of the
cited registration is set forth in all capital letters that
are slanted and set beneath a mountain while Applicant’s
“NEIGE” design mark, as claimed, is portrayed in lower-case
lettering contained in a beige border with a white
background and the ‘I’ of the mark is dotted with a flower.
These differences are significant as the courts have held
that having one word in common is not sufficient evidence
that the marks are confusingly similar.” Id. at 5
(citations omitted, emphasis in the original).
Serial No. 78536420
16
Applicant also states, “… the meaning and context of
the word ‘NEIGE’ is fundamentally different and not
confusingly similar to that of ‘ROC NEIGE.’ First, the
French phrase roughly translates to ‘snow rock’ while
‘neige’ alone translates to ‘snow.’ Thus, Registrant’s
mark refers to rocks (covered in snow, or made of snow),
not to snow itself. Applicant respectfully submits that
this delineation is important.” Id. at 6. Applicant
argues further that the design element in the cited mark
reinforces the difference in connotation between the marks.
On the other hand, the Examining Attorney argues that
the marks are similar because, when the marks are
considered in their entireties, the word elements are
dominant and similar, and because the marks convey
“substantially similar commercial impressions.” Examining
Attorney’s brief at 6.
First, we must clarify the version of Applicant’s mark
which is at issue here. In its argument, applicant claims
that its mark includes certain design elements, most
notably, color and a flower design. In applicant’s
response dated December 19, 2005, applicant attempted to
amend its drawing. In that response applicant refers to
the original drawing as being in standard characters. The
proposed amendment included the stylized presentation of
Serial No. 78536420
17
applicant’s mark with the flower design. In a later
response dated July 17 2007, following an Office action
which raised issues with regard to the proposed amendment
to the drawing, applicant withdrew the amendment stating,
“Applicant hereby withdraws prior attempts to amend the
drawing of the mark and accepts the original drawing as
part of its application for registration.” Accordingly,
the operative drawing of applicant’s mark displays the mark
in standard, lower-case characters, without any color or
design element, that is, neige. As such, we must consider
that neige could be presented in any manner of display,
within reason, for purposes of our analysis. We hasten to
add, however, that we would not reach a different
determination here if we were to consider the mark as
presented in applicant’s withdrawn amendment.
For purposes of our comparison of the marks we first
note that here, as is generally the case, the word elements
in the respective marks are dominant because potential
purchasers commonly use word marks in requesting goods.
In re Dixie Restaurants Inc., 41 USPQ2d 1531 at 1534.
Contrary to applicant’s contention, we conclude that the
inclusion of NEIGE in both marks is important. It is the
only word element in applicant’s mark, and it is at least
as significant as the other word element in the cited mark.
Serial No. 78536420
18
We have no evidence to suggest that NEIGE would be the
relatively weaker word element in the ROC NEIGE mark. Cf.
Dans un Jardin v. Le Jardin des Plantes, 226 USPQ 956, 958
(TTAB 1985). We find applicant’s arguments to that effect
unpersuasive.
Again, in our comparison of the marks at issue we must
take into account the fallibility of human memory and
strictly avoid a simplistic side-by-side comparison.
Sealed Air Corp. v. Scott Paper Co., 190 at 108.
Accordingly, in spite of the differnces between the marks,
we conclude that the similarities in appearance and sound
are more important.
With regard to connotations, in our comparison we must
translate foreign words from common languages to determine
the connotation in evaluating confusing similarity. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1692, 1896. Although the cited
registration does not include a translation, based on the
application we know that “neige” means “snow” in both the
application and the cited registration. We have confirmed
Serial No. 78536420
19
and accept applicant’s translation of “roc” as “rock.”5
However, after considering applicant’s many arguments why
the two marks would convey significantly different
connotations, we conclude that the connotations do not
differ significantly.
Both marks connote a cold and white setting. While
the idea of a rock may add something, it is not something
which transforms the connotation of the registered mark to
one which is significantly different from the connotation
of applicant’s mark. We have no evidence that ROC NEIGE
has an idiomatic meaning in French which would alter the
connotation. We also reject applicant’s arguments, based
on asserted differences in the goods, which might result in
different connotations. We have concluded that the goods
are, at least in part, identical. Accordingly, we conclude
that the respective marks convey similar connotations. We
conclude likewise with regard to the commercial impressions
of the marks for the same reasons.
Finally, after considering the marks in their
entireties, we conclude that the marks are similar in

5 Cassell’s French-English English-French Dictionary (Fifth Rev.
Ed. 1951) translates “roc” as “A rock.” The Board may take
judicial notice of dictionary definitions. See University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).

Serial No. 78536420
20
appearance, sound, connotation and commercial impression,
and therefore, similar overall.
C. Conditions of Purchase
Applicant also argues that the conditions of purchase
are such that there could not be confusion. Specifically,
applicant argues that both its goods and the goods
identified in the cited registration are not “impulse”
items, but rather specialized goods which would be
purchased with scrutiny and care. Based on the record
before us, we have no basis to conclude that the goods are
so specialized. To the contrary, again considering the
goods as identified in the application and cited
registration, the goods are everyday clothing items which
would be purchased with no more than ordinary care.
Accordingly, we conclude that the conditions of purchase
are such that they would in no way diminish the likelihood
of confusion in this case.
III. CONCLUSION
Finally, based on all evidence of record in this case
related to the du Pont factors, we conclude that there
would be a likelihood of confusion between applicant’s
neige mark used in connection with “children's better-wear,
namely dresses, tops, skirts, tailored jackets, pants,
sweaters, hosiery, footwear, hats, scarves, swimwear,
Serial No. 78536420
21
nightwear, and undergarments” and the registered ROC NEIGE
and Design mark used in connection with “jackets, wind
resistant jackets, blazers, tracksuits, sweaters, polar
linings, long trousers, ski wear, gloves, socks, neckwear,
footwear, head wear.” We conclude so because the goods
are, at least in part, identical and because the marks are
similar.
Furthermore, in determining likelihood of confusion we
must resolve any doubt in favor of the prior registrant.
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289, 1290 (Fed. Cir. 1984)
Decision: We affirm the refusal under Section 2(d).