Nova Knits, Inc.

Trademark Trial and Appeal Board

Sep 17, 2001

No. 75308399 (T.T.A.B. Sep. 17, 2001)

9/17/01 Paper No. 11
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nova Knits, Inc.
________

Serial No. 75/308,399
_______

George C. Limbach of Gray, Cary, Ware & Freidenrich for
Nova Knits, Inc.

Steven R. Berk, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______

Before Chapman, Wendel and Bottorff, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On June 13, 1997, Nova Knits, Inc. filed an
application to register on the Principal Register the mark
NOVA KNITS for “mens [sic] and womens [sic] knitted goods,
namely, sweaters.” Applicant disclaimed the word “knits.”
Applicant claimed a date of first use and first use in
commerce of 1985.
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 used on applicant’s
identified goods, so resembles the registered mark NOVA
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/308399
2
SHEERS for “pantyhose,”1 as to be likely to cause confusion,
mistake, or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
The Examining Attorney essentially takes the position
that the dominant portion of both the cited registered mark
and applicant’s mark is the identical word NOVA, with the
second word being highly descriptive in each mark; that the
marks create similar commercial impressions; that the
respective goods, while not the same clothing item, are
nonetheless closely related clothing items which may be
offered for sale by the same apparel manufacturer; and that
the goods are sold to the same general purchasers through
the same channels of trade.
Applicant contends that the marks must be considered
in their entireties, including the words “KNITS” and
“SHEERS”; that when so considered the marks are not
similar, and in several published cases the Board has found
no likelihood of confusion between marks which begin with
“NOVA” or “NOVO”; that “‘NOVA’ is a common prefix and
suffix in trademarks registered in class 25 for

1 Registration No. 1,510,208, issued October 25, 1988, Section 8
affidavit accepted, Section 15 affidavit acknowledged.
Registrant disclaimed the word “sheers.” The claimed date of
first use is November 24, 1987.
Ser. No. 75/308399
3
clothing...” (brief, p. 2); that the term “nov” or “novo”
means “new,” and because “‘new’ is an extremely common
word, the distinguishing second words “KNITS” and “SHEERS”
of applicant’s and registrant’s marks, respectively,
clearly distinguish the two marks...” (April 20, 1998
response, p. 2); and that the respective goods, sweaters
and pantyhose, are two separate and distinct types of
clothing.
Turning to a consideration of the respective goods,
the Examining Attorney has made of record copies of pages
from two catalogs (Victoria’s Secret and Hanes) to show
that pantyhose is commonly sold along with sweaters (as
well as various other items of clothing). In addition, the
Examining Attorney submitted eleven third-party
registrations, all of which issued on the basis of use in
commerce, to show that various businesses have registered a
single mark in connection with both sweaters and pantyhose.2
Third-party registrations are not evidence of
commercial use of the marks shown therein, or that the
public is familiar with them. Nevertheless, third-party
registrations which individually cover a number of

2 Also, the Examining Attorney requested in his brief that the
Board take judicial notice of dictionary definitions from The
American Heritage Dictionary of the words “hosiery” and
“pantyhose” to show the relatedness of the involved goods. The
request is granted. See TBMP §712.01.
Ser. No. 75/308399
4
different items and which are based on use in commerce have
some probative value to the extent they suggest that the
listed goods emanate from a single source. See Olde Tyme
Foods Inc., v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542,
1545 (Fed. Cir. 1992); Spoons Restaurants Inc. v. Morrison
Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d, Appeal No.
92-1086 (Fed. Cir. June 5, 1992); and In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
Moreover, it is well settled that goods need not be
identical or even competitive to support a finding of
likelihood of confusion; it is sufficient that the goods
are related in some manner or that the circumstances
surrounding their marketing are such that they would likely
be encountered by the same persons under circumstances that
could give rise to the mistaken belief that they emanate
from or are associated with the same source. See Monsanto
Co. v. Enviro-Chem Corp., 199 USPQ 590, 596 (TTAB 1978);
and In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992).
Based on the record before us, we readily conclude
that applicant’s goods, men’s and women’s knitted sweaters,
are commercially related to the cited registrant’s goods,
“pantyhose.” That is, these goods bear a sufficient
relationship that the use of the same or similar marks on
such goods would likely cause confusion. See Kangol Ltd.
Ser. No. 75/308399
5
v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945
(Fed. Cir. 1992) (Court affirmed Board holding of
likelihood of confusion between KangaROOS and a kangaroo
design for clothing, namely, athletic shoes, sweatsuits and
athletic shirts and KANGOL and a kangaroo design for golf
shirts having collars); In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991) (ESSENTIALS in stylized form for women’s
shoes against ESSENTIALS for women’s clothing, namely,
pants, blouses, shorts, and jackets); In re Apparel
Ventures, Inc., 229 USPQ 225 (TTAB 1986) (SPARKS BY
SASSAFRAS in stylized form for women’s separates, namely
blouses, skirts and sweaters against SPARKS in stylized
form for shoes, boots and slippers); and In re Serac, Inc.,
218 USPQ 340 (TTAB 1983) (RAM’S HEAD for men’s, boy’s and
children’s hosiery against a design mark for jackets,
vests, sweaters and shirts for men, women and children).
Applicant’s citation to an opposition decision (Elbeo
G.m.b.H. v. McQuade Bloomhorst Inc.) published only in
digest form (applicant provided a copy of the full
decision) is inappropriate, and applicant’s argument in
relation to that inter partes case is unpersuasive in the
context of this ex parte record.
Regarding the respective trade channels and
purchasers, the Board must determine the issue of
Ser. No. 75/308399
6
likelihood of confusion on the basis of the goods as
identified in the application and the registration. See
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). As noted above, the specific items of clothing sold
by applicant and by registrant are related, but clearly are
not identical clothing items. However, the identifications
of goods include no restrictions as to trade channels
(types of stores or outlets where either party’s goods may
be sold, e.g., department stores, boutique shops). Both
applicant’s and registrant’s goods, as identified, could be
offered and sold to the same classes of purchasers through
the same channels of trade. That is, both men and women
may purchase pantyhose and/or men’s and women’s sweaters,
either for themselves or as gifts. See In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994); and In re Elbaum, 211
USPQ 639 (TTAB 1981).
Turning next to a consideration of the respective
marks, it is well settled that marks must be considered in
their entireties. However, our primary reviewing court has
held that in articulating reasons for reaching a conclusion
on the question 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
Ser. No. 75/308399
7
or portion of a mark. That is, one feature of a mark may
have more significance than another. See Sweats Fashions
Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793,
1798 (Fed. Cir. 1987); and In re National Data Corporation,
753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
In this case, both applicant’s mark, and registrant’s
mark begin with the identical word NOVA, which is the
dominant feature of each mark. Of course, there is an
obvious difference in the two involved marks, specifically
that the term SHEERS is the second word in registrant’s
mark, while the term KNITS is the second word in
applicant’s mark. Each of these words has been disclaimed
because each one describes a type of fabric.3 This
difference in the marks does not serve to distinguish the
marks. In fact, purchasers are unlikely to remember the
specific difference between the marks due to the
recollection of the average purchaser, who normally retains
a general, rather than a specific, impression of the many
trademarks encountered. That is, the purchaser’s
fallibility of memory over a period of time must also be
kept in mind. See Grandpa Pidgeon’s of Missouri, Inc. v.

3 Applicant acknowledged that “while each of these terms can
identify a fabric, those respective fabrics are entirely
different.” Brief, p. 2.
Ser. No. 75/308399
8
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); Spoons
Restaurants Inc. v. Morrison Inc., supra; and Edison
Brothers Stores v. Brutting E.B. Sport-International, 230
USPQ 530 (TTAB 1986).
In any event, purchasers familiar with registrant’s
goods sold under the registered mark NOVA SHEERS may, upon
seeing applicant’s mark NOVA KNITS on closely related
goods, assume that applicant’s goods come from the same
source as registrant’s goods, simply referring to a
different fabric for the respective item of clothing,
SHEERS for pantyhose, and KNITS for knitted sweaters.
Applicant’s arguments that “NOVA” means “new” as shown
by previous inter partes proceedings here at the Board; and
that “NOVA” is a common prefix and suffix in trademarks
registered in the clothing class as shown by copies of
twelve third-party registrations4 are not persuasive of a
different result herein.
As explained earlier, third-party registrations are
not evidence of commercial use of the marks shown therein,
or what happens in the marketplace, or that consumers are
familiar with the third-party marks. However, such

4 Applicant originally submitted copies of eleven third-party
registrations, but with its brief on the case, applicant
submitted one additional such registration. The Examining
Attorney made no objection thereto and we have considered all
twelve third-party registrations.
Ser. No. 75/308399
9
registrations are competent to show that others in a
particular industry have registered marks incorporating a
particular term, or that the common term in the marks has a
normally understood meaning or suggestiveness in the
industry. See In re Hamilton Bank, 222 USPQ 174 (TTAB
1984). See also, In re Great Lakes Canning, Inc., 227 USPQ
483 (TTAB 1985).
On this record, applicant has not shown that the word
NOVA is suggestive or descriptive of clothing items,
pantyhose or sweaters. Further, we agree with the
Examining Attorney that each of the marks in the twelve
third-party registrations consists of the word NOVA along
with other words and designs [e.g., NOVALOGIC, BOSSA NOVA,
OSCAR NOVA (in stylized lettering and including a
rectangular design), VIA NOVA, CASANOVA (in stylized
lettering and including a rectangular design), and NOVAK
(in stylized lettering and including an Eskimo figure
design), resulting in each third-party mark forming a
separate connotation and commercial impression different
from the others.5

5 The Examining Attorney requested in his brief that the Board
take judicial notice of dictionary definitions from The American
Heritage Dictionary of the words “nova” and “Casanova” to show
differing commercial impressions created by the third-party
registered marks. The request is granted. See TBMP §712.01.
Ser. No. 75/308399
10
We find that the marks, NOVA SHEERS and NOVA KNITS,
are similar in sound, appearance, connotation and
commercial impression.
Any doubt on the question of likelihood of confusion
must be resolved against the newcomer as the newcomer has
the opportunity of avoiding confusion, and is obligated to
do so. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988); and Hilson Research Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423, at
1440 (TTAB 1993).
Based on the similarity of the marks, the relatedness
of the goods, and the similarity of the trade channels and
purchasers, we find that there is a likelihood that the
purchasing public would be confused when applicant uses the
mark NOVA KNITS for men’s and women’s knitted sweaters.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973).
Decision: The refusal to register under Section 2(d)
is affirmed.