Nienhaus & Lotz GmbH

Trademark Trial and Appeal Board

Sep 8, 2000

No. 75322091 (T.T.A.B. Sep. 8, 2000)

Paper No. 10
HRW
9/8/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Nienhaus & Lotz GmbH
________
Serial No. 75/322,091
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Karl F. Milde, Jr. of Milde, Hoffberg & Macklin, LLP
for Nienhaus & Lotz GmbH.
Hae Park-Suk, Trademark Examining Attorney, Law Office 109
(Ronald R. Sussman, Managing Attorney).
_______
Before Simms, Seeherman and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Neinhaus & Lotz GmbH has filed an application to
register the mark FASHION FOR YOU and design, as depicted
below, for “clothing, namely, coats, jackets, suits,
trousers, pants, skirts, blouses, shirts, sweaters and
underwear, non-orthopedic corsetry, foundation garments,
belts, scarves, neckerchiefs, hosiery, knitwear, namely,
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT
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2
sweaters, pullovers, scarves, headbands, shirts; shoes;
slippers.”1
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the mark 4 YOU, which has been registered
for “trousers, shorts, jogging trousers, skirts, dresses,
jackets, coats, boiler suits, shirts, T-shirts, sweat-
shirts, blouses, knitted blouses, pull-overs, sweaters,
cardigans, vests, belts, ties, leg warmers, scarves,
gloves, bikinis and leggings.”2 The refusal has been
appealed and applicant and the Examining Attorney have
filed briefs. An oral hearing was not requested.
Here, as in any determination of likelihood of
confusion, two key considerations in our analysis are the

1 Serial No. 75/322,091, filed September 12, 1997 under the
provisions of Section 44(e), based on ownership of German
Registration No. 394 09 503, issued June 29, 1995. At the
request of the Examining Attorney, applicant has disclaimed the
words FASHION FOR YOU.
2 Registration No. 2,001,479, issued September 17, 1996.
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3
similarity or dissimilarity of the respective marks and the
similarity or dissimilarity of the goods with which the
marks are being used, or are intended to be used. See In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999).
Insofar as the goods are concerned, it is obvious that
there is a significant overlap between the clothing items
of applicant and registrant. Applicant has conceded as
much, and has further conceded that the goods of both
applicant and registrant might be sold in the same stores
to the same class of purchasers. (Applicant’s response of
October 8, 1998, p. 3). Thus, we proceed on the basis that
the respective goods are either identical or closely
related clothing items which would travel in the identical
channels of trade. As a result, in making our analysis of
the respective marks, we are guided by the long-recognized
principle that the degree of similarity necessary to
support a conclusion of likelihood of confusion declines
when the marks are being used on virtually identical goods.
See Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
The Examining Attorney maintains that applicant’s mark
FASHION FOR YOU, as presented in its specific design, and
registrant’s mark 4 YOU create similar commercial
Ser No. 75/322,091
4
impressions. She argues that the dominant element, both
visually and literally, of applicant’s mark is the word
portion FOR YOU, which is the phonetic equivalent of
registrant’s mark 4 YOU. Visually, she notes that the
wording FOR YOU is prominently centered between the
bordered design, is in larger letters than the term
FASHION, and is part of that which applicant has described
as the most prominent design element in its mark, namely,
the vertical stripe containing “two sets of parenthesis
‘()’ arranged on their side” to partially form the letters
“O” in FOR and YOU. Literally, she argues that the
additional term FASHION is highly descriptive, if not
generic, for applicant’s goods.
Applicant contends that the difference in appearance
of the two marks is “as clear as night and day.” Applicant
points to the various design elements in its mark and
asserts that the appearance as a whole is that of “unique,
particular design, rather than simply the words ‘FASHION
FOR YOU’.” By contrast, notes applicant, registrant’s mark
is simply 4 YOU, in block letters. Applicant argues that
the marks are also distinguishable in sound, since
applicant’s mark contains the additional term FASHION.
Furthermore, applicant contends, since the term FASHION is
first, the emphasis would be on this term. Finally,
Ser No. 75/322,091
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applicant argues that the marks differ in connotation, in
that applicant’s mark connotes “fashion” or “high end
apparel,” whereas registrant’s mark, although “somewhat
cutesy,” creates no such impression.
While it is true that marks must be considered in
their entireties in determining likelihood of confusion, it
is also well established that there is nothing improper in
giving more or less weight to a particular portion of a
mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). Although there are significant
design features in applicant’s mark, we agree with the
Examining Attorney that it is these very features which
bring the words FOR YOU to the focal point. The much
smaller lettering, the placement far at the top of the mark
and the absence of any interior design similar to the “O”s
in FOR YOU all diminish the visual impact of the term
FASHION. The FOR YOU portion of applicant’s mark clearly
dominates the mark visually. Moreover, despite any
uniqueness of the design features, it is the wording FOR
YOU, as brought to the forefront by the design features,
which is more likely to be relied upon by purchasers in
referring to the goods, and it is this wording, rather than
the design, which will make a longer lasting impression on
them. Thus, the word portion FOR YOU must be accorded more
Ser No. 75/322,091
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weight in determining likelihood of confusion. See Ceccato
v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32
USPQ2d 1192 (TTAB 1994). The words FOR YOU are obviously
the phonetic equivalent of registrant’s mark 4 YOU.
We are not discounting the fact that applicant’s mark
contains the additional term FASHION. Even though this
term is, at the very least, highly descriptive when used in
connection with wearing apparel, the presence of the term
in applicant’s mark cannot be ignored. Nonetheless, we do
not agree with applicant that the term FASHION is the
dominant feature of its mark or that FASHION changes the
connotation of the mark as a whole. The overall impression
created by applicant’s mark is that this is apparel FOR
YOU, the same impression created by registrant’s mark.
Even when measurable weight is given to the term FASHION,
we are in total agreement with the Examining Attorney that
purchasers might well believe that applicant’s FASHION FOR
YOU goods are the “high-end” line of registrant’s 4 YOU
clothing. Applicant’s mark might very reasonably be viewed
as a modified version of registrant’s basic 4 YOU mark
which has been adopted for registrant’s high fashion items.
The overall commercial impressions created by the
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respective marks are the same, that these goods are “for
you.”3
Accordingly, we find confusion likely. To the extent
that there may be any doubt on this question, we follow the
well-established principle that such doubts must be
resolved in favor of the registrant. See In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir.
1988).
Decision: The refusal to register under Section 2(d)
is affirmed.
R. L. Simms
E. J. Seeherman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board

3 Applicant has referred for the first time in its brief to
several third-party registrations for other marks containing the
words FOR YOU or phonetic equivalents thereof. The Examining
Attorney has properly objected to this means of introduction of
the registrations, both as being untimely and as not being in the
form of soft copies or the electronic equivalents. Accordingly,
we have given no consideration to applicant’s arguments with
respect to these third-party registrations. See Trademark Rule
2.142(d).
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