Outdoor Cap Company, Inc.

Trademark Trial and Appeal Board

Sep 23, 2008

No. 77275551 (T.T.A.B. Sep. 23, 2008)

Decision Mailed:
September 23, 2008
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Outdoor Cap Company, Inc.
________

Serial No. 77275551
_______

Mark G. Kachigian of Head, Johnson & Kachigian, P.C. for Outdoor
Cap Company, Inc.

Dominic J. Ferraiuolo, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Hohein, Kuhlke and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Hohein, Administrative Trademark Judge:

Outdoor Cap Company, Inc. has filed an application to
register the mark "ECO3" on the Principal Register in standard
character form for "headwear" in International Class 25.1
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 goods, so resembles the
mark "CO 3," which is registered on the Principal Register in
standard character form for "men's, women's, and children's

1 Ser. No. 77275551, filed on September 10, 2007, which is based on an
allegation of a bona fide intention to use such mark in commerce.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 77275551
2
clothing, namely, T-shirts, polo-shirts, jackets, sweatshirts,
pants, hats and aprons" in International Class 25,2 as to be
likely to cause confusion, or to cause mistake, or to deceive.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in
any likelihood of confusion analysis, two key considerations are
the similarity or dissimilarity in the goods at issue and the
similarity or dissimilarity of the respective marks in their
entireties.3 See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Here, inasmuch as
it is plain that applicant's goods, namely, "headwear," encompass
and hence are identical in part to the cited registrant's "hats"
and are also otherwise closely related to the cited registrant's
"men's, women's, and children's clothing, namely, T-shirts, polo-
shirts, jackets, sweatshirts, pants ... and aprons," such that

2 Reg. No. 3,344,314, issued on November 27, 2007, which sets forth a
date of first use anywhere and in commerce of July 20, 2006.

3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."
192 USPQ at 29.
Ser. No. 77275551
3
the respective goods would necessarily be sold through the same
channels of trade to the same classes of customers, the focus of
our inquiry in this appeal is accordingly on the similarities and
dissimilarities in the marks at issue.4
In this regard, we note as a preliminary matter that as
stated by our principal reviewing court in Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994),
"[w]hen marks would appear on virtually identical goods ..., the
degree of similarity [of the marks] necessary to support a
conclusion of likely confusion declines." Applicant argues in
its brief, however, that its "ECO3 mark is not likely to be
confused with the cited mark CO 3 because they are not similar
enough to foster such confusion." Among other things, applicant
stresses that the "the registered mark has a space between the
'CO' and the '3,' whereas ... the Applicant's mark ECO3 does not have
a space between the 'ECO' and the '3.'" Such a "distinction between
the two [marks] is small, but very important," according to
applicant, inasmuch as it aids in distinguishing the marks at
issue.
Applicant also argues in its brief that its "mark ECO3
is distinct in appearance, sound, connotation, and commercial
impression when contrasted--in its entirety--with the CO 3 mark."
In terms of appearance, applicant contends that " [t]o the casual
observer, the Applicant's mark creates the visual impression of a
single word," while "the cited mark ... creates the impression of

4 Applicant, we note, does not contend otherwise in its brief.
Ser. No. 77275551
4
two separate bits, a CO and a 3," which "gives the impression not
of a single word, but of two words or possibly an abbreviation or
alphanumeric identifier."
As to distinctions in sound, connotation and commercial
impression, applicant asserts that:
Likewise, the two marks differ in sound.
The Applicant's mark is pronounced "echo
three" or "Ä“-co three," whereas the cited
mark is likely pronounced as the letter C,
the letter O, and the number 3. It is
possible to argue that it would be pronounced
"co-three," however, given the fact that
"co-" is primarily a prefix and there is a
space between the "CO" and the "3,"
suggesting that the "CO" does not operate as
a prefix, this pronunciation is unlikely.
Therefore, the two marks differ dramatically
in sound.

Most importantly, the two marks differ
drastically in suggested connotation and
commercial impression. The Applicant's mark,
ECO3, brings to mind ecology. In these times
where the environment is on the minds of
consumers, consumers are accustomed to seeing
the term "ECO" indicating that the product so
labeled is related to ecology, either because
it is intended for outdoor use, it is made
from environmentally friendly processes, or
it otherwise serves an ecological purpose.
CO 3, on the other hand, does not bring
ecology to mind. In fact, the registered
mark does not bring any specific meaning or
impression to mind, other than a set of
letters and a number. The registered mark
creates the impression of being either an
abbreviation or an arbitrary alphanumeric
identifier. Therefore, a consumer is not
likely to confuse the two, even if the marks
are not considered side by side but rather
are considered solely based on their
commercial impressions. Moreover, a consumer
will not be confused into thinking that the
goods of the parties come from the same
source.

Ser. No. 77275551
5
We agree with the Examining Attorney, however, that the
marks at issue are sufficiently similar that confusion is likely.
As the Examining Attorney accurately observes in his brief, the
absence of a space in applicant's mark fails to adequately
distinguish such mark from registrant's mark because:
Applicant's mark ECO3 in standard
character [form] and Registrant's mark CO 3
in standard character [form] feature the same
exact combination of letters and a number in
the same exact order, namely "CO3" versus "CO
3." Applicant's addition of the letter "E"
to the letter/number combination does not so
significantly change the overall [commercial]
impression of its mark so as to create a
different overall [commercial] impression
from the [mark in the] cited registration.

With respect to applicant's contention that its mark
readily brings to mind the concept of "ecology" simply by the
presence of the letters or abbreviation "ECO" at the beginning of
its "ECO3" mark, we fail to see why such is necessarily the case,
given that the mark also contains the number "3." Rather, like
registrant's "CO 3" mark, the presence of the number "3" has a
tendency to make the marks at issue susceptible to verbalization
as combinations of letters and a number. As acknowledged by
applicant, if registrant's mark is likely to be pronounced as
either "the letter C, the letter O, and the number 3" or perhaps
even "co-three," then it would seem that applicant's mark is
likewise susceptible to being pronounced as a combination of
letters and a number, namely, the letter "E," the letter "C," the
letter "O" and the number "3" or as "Ä“-co three," either of which
is substantially similar to registrant's "CO 3" mark when the
marks are considered in their entireties. This is quite likely
Ser. No. 77275551
6
because, as the Examining Attorney properly points out, there is
no correct pronunciation of a mark" inasmuch as, generally
speaking, "it is impossible to predict how the public will
pronounce a particular mark." See, e.g., In re Great Lakes
Canning, Inc., 227 USPQ 483, 484 (TTAB 1985); Gio. Budon & C.
S.p.A. v. Buitoni Foods Corp., 205 USPQ 477, 482 (TTAB 1979);
Yamaha International Corp. v. Stevenson, 196 USPQ 701, 703 (TTAB
1977); and Sterling Drug Inc. v. Sankyo Co., Ltd., 139 USPQ 395,
396 (TTAB 1963).
Clearly, not only are the respective marks susceptible
to being pronounced in substantially the same manner, but the
marks are substantially similar in appearance and overall
commercial impression, differing for all practical purposes only
in the fact that applicant's mark begins with the letter "E." As
the Examining Attorney, citing McCarthy on Trademarks & Unfair
Competition §7:10 (4th ed. 2008), further notes, when viewing
marks which arbitrarily consist of letters and/or numbers, a
change of only one letter may still result in confusion. Thus,
notwithstanding the presence or absence of a space, the letters
and numbers constituting the marks at issue herein are otherwise
completely identical in terms of the shared characters which are
utilized and their order of appearance, namely: the letter "C,"
followed by the letter "O" and ending with the number "3." As
the Examining Attorney points out, the Board considers it a
"well-established principle of our trademark law that confusion
is more likely between arbitrarily arranged letters [and/or
numbers] than between other types of marks." Edison Bros.
Ser. No. 77275551
7
Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ
530, 533 (TTAB 1986). Applicant, moreover, has offered no
evidence to substantiate its contention that, when used in
connection with headwear, the mark "ECO3" must necessarily or
exclusively connote "ecology," such that the respective marks can
be said to differ significantly in meaning.
Accordingly, we conclude that purchasers and
prospective consumers who are familiar or otherwise acquainted
with registrant's "CO 3" mark for "men's, women's, and children's
clothing, namely, T-shirts, polo-shirts, jackets, sweatshirts,
pants, hats and aprons," would be likely to believe, upon
encountering applicant's substantially similar "ECO3" mark for
"headwear," that identical in part and otherwise commercially
related goods emanate from, or are sponsored by or affiliated
with, the same source. To the extent, however, that there may be
any doubt as to our conclusion in this regard due to the asserted
differences in connotation between the marks at issue, we resolve
such doubt, as we must, in favor of the registrant. See, e.g.,
In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944,
1948 (Fed. Cir. 2004); In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); In re Martin's Famous
Pastry Shoppe, Inc., 748 F.2d 156, 223 USPQ 1289, 1290 (Fed. Cir.
1984; and In re Pneumatiques Caoutchouc Manufacture et Plastiques
Kleber-Columbes, 487 F.2d 918, 179 USPQ 729, 729 (CCPA 1973).
Decision: The refusal under Section 2(d) is affirmed.