OMG! Handbags LLC

Trademark Trial and Appeal Board

Nov 7, 2011

No. 77826782 (T.T.A.B. Nov. 7, 2011)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: November 7, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re OMG! Handbags LLC
________

Serial No. 77826782
_______

Robert S. Beiser of Vedder Price PC for OMG! Handbags LLC.

Ronald McMorrow, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Cataldo and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by OMG! Handbags LLC to
register the mark shown below on the Principal Register for
“handbags, purses and wallets” in International Class 18.1

1 Application Serial No. 77826782 was filed on September 15,
2009, based upon applicant’s assertion of July 1, 2009 as a date
of first use of the mark anywhere and in commerce on the goods.
“The color(s) black, pink, and white is/are claimed as a feature
of the mark.” “The mark consists of a black and pink horizontal
oval. The left side of the oval is comprised of three layers of
black and pink circles. Inside the remaining oval and to the
right is; a black stylized ‘M’ and a pink stylized ‘G’. All
negative space consists of a white background.”
Ser. No. 77826782
2

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used on or in connection with its
goods, so resembles the mark OMG, previously registered on
the Principal Register in typed or standard characters2 for
“backpacks, all purpose sport bags, garment bags, tote
bags, travel bags, handbags, luggage, leather shopping
bags, mesh shopping bags, textile shopping bags and
wallets” in International Class 18,3 as to be likely to
cause confusion. When the refusal was made final,
applicant appealed.
Procedural History
Subsequent to the examining attorney’s issuance of a
final Office action on this refusal, the cited registration
was amended, inter alia, to restrict the identification of
goods in Class 18 to “all purpose sport bags, tote bags,

2 Trademark Rule 2.52(a) was amended in 2003 to refer to “typed
drawings” as “standard character” drawings. See Trademark Rule
2.52(a); 37 CFR § 2.52(a).
3 Registration No. 2605263 issued on August 6, 2002. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Section 7
amendment issued August 10, 2010. The registration as originally
issued and amended recites additional goods in other classes.

Ser. No. 77826782
3
and textile shopping bags.” In its request for
reconsideration, applicant stated as follows:
Applicant assumes that the Examiner may maintain
the rejection finding that the goods as they are
listed may be related and overlap. Applicant
respectfully requests, if the Examiner does not
agree with the Arguments below a non-final action
as the goods of Registrant have changed since the
rejection was made final.4

Applicant then presented arguments and evidence against the
refusal to register under Section 2(d) based upon the
amended identification of goods in the cited registration.
In his denial of applicant’s request for reconsideration,
the examining attorney noted that “evidence previously made
of record in this case clearly shows that applicant’s goods
and the registrant’s remaining goods are closely related.”5
As a result, the “refusal made final in the Office action
dated 6/23/10 is maintained and continues to be final.”6
The examining attorney also submitted additional evidence
in support of the refusal to register based upon the
amended identification of goods in the cited registration.
Applicant and the examining attorney filed main briefs
on the issue under appeal and applicant filed a reply
brief.

4 December 21, 2010 request for reconsideration, p. 2.
5 January 7, 2011 denial of request for reconsideration, p. 2.
6 Id.
Ser. No. 77826782
4
In its main brief, applicant concludes its arguments
against the refusal to register by stating:
At a minimum, the Board must remand the present
case for reconsideration as Appellant has not had
an opportunity to enter into the record evidence
to rebut the argument made after final rejection
that tote bags are related to handbags.7

We note, however, that the examining attorney stated in
both his first and final Office actions, as well as his
denial of applicant’s request for reconsideration, the
position that applicant’s goods are related to all of the
goods identified in the cited registration, including those
remaining after amendment thereof. In addition, the
evidence attached to the examining attorney’s final Office
action addresses the relationship between applicant’s goods
and those remaining in the cited registration post
amendment. Applicant thus was afforded two opportunities
to submit countervailing evidence, and a further
opportunity to submit such evidence with a request for
remand. See TBMP § 1207.02 (3d ed. May 2011). However,
applicant neither filed such evidence nor submitted a
proper request for remand, and will not now be heard to
argue for the first time in its brief that it seeks an
additional opportunity to do so. See Trademark Rule

7 Applicant’s brief, p. 14.

Ser. No. 77826782
5
2.142(g). See also TBMP § 1209.04 (3d ed. May 2011). In
short, applicant has not shown good cause for its remand
request at this late stage of the proceeding, and the
request accordingly is denied. Id.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key, though not exclusive,
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s mark and registrant’s mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
Ser. No. 77826782
6
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). We note initially that the test
under the first du Pont factor is not whether the marks can
be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the goods or services
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). We further note that
under actual marketing conditions, consumers do not
necessarily have the luxury of making side-by-side
comparisons between marks, and must rely upon their
imperfect recollections. See Dassler KG v. Roller Derby
Skate Corp., 206 USPQ 255, 259 (TTAB 1980).
In this case, applicant’s mark,

is similar to the registered mark OMG in that both consist
of the letters “O,” “M” and “G”. Applicant argues that “it
Ser. No. 77826782
7
is obvious that Applicant’s mark is a stylized version of
MG, and not simply OMG.”8 It is applicant’s position that
its mark consists of “a split bull-eye rather than the
letter O”9 and the letters MG. We find, however, that
consumers viewing applicant’s mark are far more likely to
perceive it as consisting of a stylized letter O followed
by the letters MG rather than the design of a split bull’s
eye followed by the letters MG. First, applicant
acknowledges that OMG is used as shorthand or a texting
emoticon for the expression “oh my God.”10 Thus, OMG is a
known expression and consumers viewing applicant’s mark are
likely to recognize it as such. We further note that in
its original application, applicant (OMG! Handbags, LLC
[emphasis supplied]) disclaimed OMG apart from the mark as
shown, tacitly acknowledging that the split bull’s eye
design is a stylized letter O. We note in addition that a
photograph (reproduced below) from applicant’s Internet
website, made of record by applicant and included with its
brief,11 displays the mark in close proximity to the letters
OMG! written on a mirror.

8 Id. at 9.
9 Id. at 10.
10 Id. at 11.
11 Id. at 8.

Ser. No. 77826782
8

Thus, we find both from viewing applicant’s mark as it
appears in the drawing and as it is used by applicant that
the mark consists of the letters OMG in various degrees of
stylization and an oval carrier surrounding them. The oval
carrier clearly is less prominent than the letters OMG and
does little to distinguish applicant’s mark from that of
registrant. It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
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 of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. See In re National Data Corp., 753
Ser. No. 77826782
9
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Further,
when a mark comprises both a word and a design, then the
word is normally accorded greater weight because it would
be used by purchasers to request the goods or services.
See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB
1987). We find, therefore, that the letters OMG in
applicant’s mark are the dominant feature thereof.
Viewing the marks as a whole, we find that they are
highly similar in appearance, identical in sound and
meaning, and convey highly similar commercial impressions.
We further note that because registrant’s mark is in
standard character form we must consider all reasonable
presentations of that mark including the same stylization
found in applicant’s mark. See Phillips Petroleum v. C.J.
Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). See also
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847-48 (Fed. Cir. 2000). Simply put, consumers
viewing applicant’s mark are likely to believe it is a
stylized version of that of registrant.
The Goods
We next compare applicant’s goods with those of
registrant. In making our determination under the second
du Pont factor, we look to the goods as identified in the
involved application and cited registration. See Octocom
Ser. No. 77826782
10
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
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.”)
In this case, applicant’s goods are identified as
“handbags, purses and wallets” and registrant’s goods, as
amended, are identified as “all purpose sport bags, tote
bags, and textile shopping bags.”12 The examining attorney
submitted during prosecution of the application copies of

12 In its main brief and reply brief, applicant argues that the
examining attorney must not “revive” goods that were deleted from
the identification of goods in the cited registration for
purposes of determining the relatedness of applicant’s goods with
those of registrant. To be absolutely clear on this point and in
accordance with the authorities cited infra, our analysis of the
relatedness of the goods is confined to those recited in the
involved application and the “all purpose sport bags, tote bags,
and textile shopping bags” remaining in the identification of
Class 18 goods in the cited registration after the Section 7
amendment.
Ser. No. 77826782
11
use-based, third-party registrations reciting the goods
identified in the involved application and cited
registration. The following examples are illustrative:
Registration No. 3502952 for goods including “all
purpose sports bags, tote bags, purses, handbags,
textile shopping bags, wallets”;

Registration No. 3319913 for goods including
“sports bags, handbags, purses, wallets”; and

Registration No. 3738310 for goods including
“all-purpose sports bags, handbags, purses,
textile shopping bags, tote bags, wallets.”

These registrations suggest, in general, that applicant’s
handbags, purses and wallets are related to registrant’s
sports bags, tote bags and textile shopping bags. See In
re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214,
1217-18 (TTAB 2001). Although these registrations are not
evidence that the marks shown therein are in use or that
the public is familiar with them, they nevertheless have
probative value to the extent that they serve to suggest
that the goods listed therein are of a kind which may
emanate from a single source. See, e.g., In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
at n. 6 (TTAB 1988).
The examining attorney further made of record evidence
from commercial Internet websites showing, inter alia,
Ser. No. 77826782
12
handbags and purses, along with tote bags, textile shopping
bags or sports bags, sold under the same marks. These
websites include landsend.com, winnerspurses.com,
bagking.com, shop.puma.com, jwhulmeco.com, and
treasuresworldwide.com. Such evidence serves to
demonstrate that third parties are using a single mark to
identify applicant’s type of goods as well as those of
registrant, as amended.
Based upon the evidence made of record by the
examining attorney, we find that applicant’s goods are
related to those provided by registrant.
Channels of Trade
We are not persuaded by applicant’s unsupported
argument that “Registrant’s goods are sometimes given for
free by retailers and used as promotional items, surely not
as fashion goods as are Appellant’s goods.”13 As noted
above, we must look to the identification of goods in the
involved application and cited registration to determine
whether any recited limitations in trade or marketing
channels suggest that such goods will be encountered by
different consumers. See Octocom Systems, Inc., 16 USPQ2d
at 1787; and Paula Payne Products, 177 USPQ at 77. In this

13 Id. at 14.

Ser. No. 77826782
13
case, neither applicant’s nor registrant’s identification
of goods contains any limitations regarding the channels of
trade therefor, the consumers to whom the goods are
marketed, or the conditions under which they are marketed
and sold. Accordingly, both applicant’s and registrant’s
goods are presumed to be suitable for any use that is
normal therefor, and also to move in all normal channels of
trade and be available to all classes of potential
consumers. See In re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
Registrant’s Use of Its Mark
Finally, applicant asserts that the registered mark is
not being used as a trademark. To the extent that
applicant’s allegations constitute a collateral attack on
registrant’s registration, they are impermissible. Section
7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides
that a certificate of registration on the Principal
Register shall be prima facie evidence of the validity of
the registration, of the registrant’s ownership of the mark
and of the registrant’s exclusive right to use the mark in
connection with the goods or services identified in the
certificate. During ex parte prosecution, including an ex
parte appeal, an applicant will not be heard on matters
that constitute a collateral attack on the cited
Ser. No. 77826782
14
registration (e.g., applicant’s claim that the registered
mark is abandoned). In re Dixie Restaurants, Inc., 41
USPQ2d at 1534; and In re Peebles Inc., 23 USPQ2d 1795,
1797 n.5 (TTAB 1992).
Accordingly, no consideration has been given to
applicant’s arguments in this regard.
Disclaimer
As noted above, with its initial application,
applicant submitted a disclaimer of OMG, which was later
withdrawn at the suggestion of the examining attorney. In
its brief, applicant indicates that it “would gladly
reinstate the disclaimer if the Board was [sic] to find
that such an entry would help overcome the rejection.”14
However, a disclaimer of OMG would not serve to avoid
confusion. See, e.g., Cancer Care, Inc. v. American Family
Life Assurance Company of Columbus, 211 USPQ 1005 (TTAB
1981).
As the wording of the disclaimer indicates (i.e., “no
claim is made to the exclusive use of … apart from the mark
as shown” – emphasis added), the disclaimed matter is
accorded significance as an integral part of the composite
mark. See American Dietaids Company, Inc. et. al. v. Plus

14 Id.

Ser. No. 77826782
15
Products, 191 USPQ 146 (DCNY 1976). The disclaimer of
matter in a mark does not have the effect of removing the
matter from the mark. Bordon, Inc. v. W.R. Grace & Co.,
180 USPQ 157 (TTAB 1973). It is well established that
disclaimed matter must be considered in determining
likelihood of confusion. See Kellogg Co. v. Pack “Em
Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990); and Glamorene
Products Corporation v. Boyle-Midway, Inc., et. al., 188
USPQ 145, 164 (SDNY 1975). Moreover, the public viewing
the mark is unaware of what, if any, portions of a mark may
be disclaimed in a federal registration. See In re
National Data Corp., 224 USPQ at 751.
Accordingly, applicant’s proffered disclaimer would
have no effect on the analysis or determination of the
issue under appeal.
Summary
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods sold under its mark that the
goods originated with or are associated with or sponsored
by the same entity.
Decision: The refusal of registration is affirmed.