Paper Doll Promotions, Inc.

Trademark Trial and Appeal Board

Aug 13, 2007

No. 76451078 (T.T.A.B. Aug. 13, 2007)

Mailing:
August 13, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Paper Doll Promotions, Inc.
________

Serial No. 76451078
_______

Charles C. Garvey, Jr. and Seth M. Nehrbass of Garvey,
Smith, Nehrbass & Doody, L.L.C. for Paper Doll Promotions,
Inc.

Sonya B. Stephens, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Rogers, Zervas and Cataldo,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Paper Doll Promotions, Inc. (applicant) has applied,
under the intent-to-use provisions of the Trademark Act, to
register the mark PAPER DOLL PROMOTIONS in standard
character form. The precise goods for which applicant
seeks to register the mark is an issue in this appeal.
However, there is no dispute that the goods are "costumes"
of one or more types.
This Opinion is a
Precedent of the
TTAB
Ser. No. 76451078
2
The examining attorney has refused registration of
applicant's mark, in view of the prior registration of the
mark PAPER DOLL, in standard character form, for
“children's sportswear, namely, skirts, pants, blouses,
vests, rompers, shirts, jackets, shorts, dresses, two piece
sets consisting of slacks and jackets or skirts and
jackets, and pants suits, and women's wearing apparel,
namely, junior dresses, two-piece sets consisting of slacks
and jackets or skirts and jackets, pants suits, blouses,
skirts, shorts, tops, dresses and jackets” in International
Class 251, and of the mark PAPERDOLL A WOMAN BY ANY
DEFINITION and design (shown below) for “clothing, namely,
t-shirts and underwear” in International Class 25.2

1 Registration No. 2375912, issued August 8, 2000, Section 8 and
15 affidavits accepted and acknowledged, respectively.

2 Registration No. 2832820, issued April 13, 2004. The
registration includes a description stating that the design
elements are a stylized woman’s head and a butterfly.

Ser. No. 76451078
3
The two cited registrations are owned by different
entities.
The examining attorney eventually made the refusal of
registration final, as to both cited registrations and as
to a requirement that applicant amend the identification
and classification of its goods. Applicant filed an appeal
and a request for reconsideration. The request for
reconsideration has been denied and both applicant and the
examining attorney have filed briefs on appeal.
An analysis of likelihood of confusion under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), includes a
comparison of the goods or services in the refused
application and cited registration(s). In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed.
Cir. 2003). It is necessary then to consider first the
issues of applicant's identification and classification.

The Identification of Goods and Classification

The application, as filed, sought registration of
applicant's mark for "costumes" and for "entertainment
services, namely conducting parties (including costume
parties and parties wherein talented performers are
provided[)] at customer facilities such as convention
centers, hotels, and onboard cruise ships for passengers of
Ser. No. 76451078
4
all ages." Applicant did not classify the goods or
services.
The examining attorney's initial office action
recognized the separate listing of goods and services. The
examining attorney also noted, however, that applicant had
only paid an application fee for one class, and stated that
a likelihood of confusion search would not be conducted and
the application would not be examined on its merits until
applicant either paid an additional fee or deleted one
class.3 The examining attorney did not address the
definiteness of either identification or the proper
international classification of the goods or services.
While an applicant "should" designate the
international classes in which its goods and services fall
"whenever the information is known," the Office generally
will assign class numbers when an applicant does not
provide them. See TMEP Sections 1401.03 and 1401.03(b).
The examining attorney did not assess initial

3 The examining attorney asserted a written office action "must
issue" when insufficient fees have been paid and there is no
"authorization to charge the omitted fees." However, TMEP
Section 810.01, on which the examining attorney relied, actually
provides: "If the applicant has not provided a specific
authorization to charge an account, the examining attorney should
attempt to contact the applicant by telephone to secure a written
authorization to charge fees to a credit card or deposit account
by fax. If this is successful, the examining attorney should have
the LIE [legal instruments examiner] charge the necessary fees to
the credit card or deposit account and proceed with examination."
Ser. No. 76451078
5
classification or any other issue presented by the
application when issuing the first office action. See TMEP
Section 1401.03(b)("If an incorrect class number was
designated by the Pre-Examination Section, the examining
attorney must inform the applicant of the correct class
number for the identified goods or services and require
amendment of the classification.").
Applicant responded to the first office action by
deleting its class of services, so that the application was
thus restricted to one seeking registration of the mark for
"costumes." Applicant did not address classification of
these goods. The examining attorney, in the second office
action, noted the deletion of the services, writing, "The
applicant's request to proceed solely on its goods in
International Class 25 has been accepted and entered into
the record." However, later in the same office action,
when the examining attorney first raised an issue about the
identification, the examining attorney stated (1) that the
wording "costumes" was "unacceptable as indefinite," and
(2) "the applicant must correct the classification of the
goods … to classify them in International Class 25" because
the "Office incorrectly classified the goods in
International Class 41 during the preliminary review of
this application." Though the office action did not
Ser. No. 76451078
6
explain why the wording "costumes" was considered
indefinite, a format for an amended, more definite
identification was included.4
In applicant's response to the second office action –
which was the first office action refusing registration and
addressing identification and classification issues –
applicant did not discuss classification but did argue that
it viewed "costumes" as a sufficiently definite
identification. In the third office action, the examining
attorney maintained the requirement for a more definite
identification and proper classification. Nonetheless,
applicant asserted again "that 'costumes' is definite
enough," that applicant intends to use the mark for various
types of costumes, and that the mere fact the Office's
"Trademark ID Manual"5 lists nine different acceptable
identifications for various types of costumes does not mean
"costumes" alone is not definite enough. In the final
refusal of registration, the examining attorney argued that
the absence of "costumes" per se from the Office's ID
manual "means exactly that 'costumes' is not specific

4 We note that Class 25 covers clothing and Class 41 covers
entertainment services. See TMEP Section 1401.02(a).
5 References herein to the Office's ID manual are references to
the "Trademark Manual of Acceptable Identifications and
Classifications for Goods and Services," available on the web at:
http://www.uspto.gov/web/offices/tac/doc/gsmanual.

Ser. No. 76451078
7
enough," and maintained the requirement for a more specific
identification.6 In addition, the examining attorney
reiterated that applicant would have to correct the
classification of its goods to Class 25.
In a request for reconsideration, applicant proposed
amendment of the identification of goods to "Costumes,
namely masquerade costumes, Halloween costumes, Mardi Gras
costumes, and custom costumes, in International Class 25."
The examining attorney, in what appears to be a form office
action denying the request for reconsideration, inserted a
footnote acknowledging the proposed amended identification
but concluding, "the identification of goods remains
unacceptable as indefinite (based on the applicant's use of
the indefinite wording 'custom costumes'). TMEP section
1402.01."7

6 In the final office action, the examining attorney included a
reprint of 9 acceptable identifications for various types of
costumes, all indicated to be in Class 25.

7 There is nothing in the record to indicate that the examining
attorney contacted applicant by telephone to discuss a possible
examiner's amendment to remedy the one asserted problem in the
proposed identification ("custom costumes"). There is also
nothing in the record to indicate that applicant contacted the
examining attorney by telephone after receiving the office action
denying the request for reconsideration. However, we note that
the Board's order resuming this appeal issued scarcely a week
after the office action denying the request for reconsideration,
and applicant may not have thought it an option.

Ser. No. 76451078
8
As a result, it is the examining attorney's position,
as stated in the Office's brief on appeal, that the
operative identification is "'costumes' classified by the
applicant in International Class 41." (Brief, unnumbered
p. 1; emphasis added.) More specifically, the examining
attorney contends, "On June 9, 2003, the applicant
submitted a response to the first Office action in which it
amended the identification of goods to 'costumes in
International Class 41.'" (Brief, unnumbered p. 2;
emphasis added.)
For the purpose of assessing applicant's compliance
with the examining attorney's requirements in regard to the
identification and classification, we consider the
identification and class adopted by applicant in the
request for reconsideration to be the operative
identification and class. Moreover, we consider the
question of classification to have been settled by
applicant's request for reconsideration, notwithstanding
the examining attorney's assertions quoted above.
First, it is not true that applicant ever classified
costumes in Class 41. In fact, the examining attorney's
second office action specifically acknowledged that the
Office had mistakenly assigned Class 41 to the listing of
goods during preliminary review of the application. In
Ser. No. 76451078
9
addition, applicant's June 9, 2003 response did not address
the question of classification.
Second, there can be no logical argument made that
classification is an issue on appeal or that, as the
examining attorney states, "the applicant has failed to
provide … a proper classification" of its goods. (Brief,
unnumbered p. 14.) According to Trademark Rule 2.32(a)(7),
37 C.F.R. §2.32(a)(7), the international classification
should be provided in a "complete application," but adds
"if known." The TMEP explains that if an applicant's
designation of a class "is clearly wrong (e.g., goods are
classified in a service class)" the Office will correct the
classification; and if the applicant does not designate
classes, "the Office will do so." TMEP Section 1401.03(b)
(emphasis added). The TMEP also provides that amendment or
correction of classification may be made by examiner's
amendment without prior authorization by applicant or its
attorney. Id.
In this case, the examining attorney acknowledged that
the Office incorrectly classified applicant's goods in a
service class. Throughout prosecution, the examining
attorney consistently indicated that Class 25 was the
proper class for applicant's "costumes," irrespective of
whether such an identification is definite enough. If the
Ser. No. 76451078
10
Office will correct an applicant's error when applicant
incorrectly classifies goods in a service class, then
surely the Office is able to correct its own such error.
Moreover, in its request for reconsideration, applicant
amended the classification of its goods to Class 25. While
the examining attorney rejected the proposed amended
identification, because of asserted indefiniteness of a
portion thereof, there was no basis for the examining
attorney to reject applicant's amendment of the
classification.8
While the question of classification is therefore
settled – the goods are classified in Class 25 – and is not
an issue on appeal, the identification is an issue on
appeal. As already noted herein, this issue was first
addressed in the second office action. The examining
attorney wrote, "The wording in the identification
['costumes'] is unacceptable as indefinite. TMEP Section
1402.01." A suggestion was made that applicant's
"costumes" be specified by type, "e.g., Halloween,
masquerade and/or costumes for use in role-playing games."

8 It is possible the examining attorney thought class 25 might
not be the correct class for "custom costumes," if by those words
the applicant intended to indicate that it offers some sort of
custom manufacturing services. We can only guess about this,
however, because the examining attorney did not explain why
"custom costumes" was viewed as indefinite.
Ser. No. 76451078
11
In the third office action, the examining attorney
quoted from the second office action and, responding to
applicant's contention that "costumes" is a definite
identification, added, "The applicant is respectfully
advised that, if the term 'costumes' was definite enough,
the examining attorney would not have specifically stated
in the second non-final Office action that said term was
indefinite and would not have required amendment of the
same." Apart from referring applicant to TMEP Section
1402.01 and to the Office's ID manual, the examining
attorney's third office action also referred applicant to
"a detailed discussion of this Office's authority and
rationale for requiring a specific identification of goods
or services in an application, see Skoler, Trademark
Identification - Much Ado About Something?, 76 Trademark
Rep. 224 (1986)."
Applicant's arguments in response to the requirement
for a more definite identification, made in the second and
third office actions, were set forth earlier in this
opinion. As noted in that part of this opinion, the
examining attorney was not convinced by applicant's
arguments to withdraw the requirement and made the
requirement final. While the second and third office
actions explain the Office's authority to require a
Ser. No. 76451078
12
definite identification of goods and refer applicant to
explanatory material, the examining attorney did not set
forth any particular rationale for the requirement in this
case, i.e., the examining attorney did not explain
precisely why "costumes" is indefinite. Two possible
explanations are (1) the examining attorney's assertion in
the final refusal that "the fact that the broad
identification 'costumes' is not listed in [the ID manual]
means exactly that 'costumes' is not specific enough," and
(2) the examining attorney's statement in the Office's
appeal brief that "the identification of goods is broad and
could include goods classified in other international
classes (e.g., 'doll costumes' in International Class 28).
TMEP §§1402.01 and 1402.03."
The first of these rationales for the requirement that
"costumes" be amended, i.e., the contention that the
absence of that term from the Office's ID Manual "means
exactly that 'costumes' is not specific enough," is not
true. The manual's "listing is not exhaustive" and the
Office acknowledges that, "No listing could include all
possible identifications for the multitude of products and
services for which marks may be registered." TMEP Section
1402.04. See also, Examination Note 98/1 Classification
Ser. No. 76451078
13
and Identification of Goods and Services Issues (available
at the Office's web page via
http://www.uspto.gov/web/offices/tac/notices/notices.htm):
… If an ID satisfactorily accomplishes these
needs for clarity, classification and scope, it
should be accepted even if the language proposed
by the applicant doesn’t appear in the ID Manual.9
(emphasis added)

The second rationale for the examining attorney's
conclusion that "costumes" is not sufficiently definite,
i.e., that it could include goods outside Class 25, was set
forth for the first time in the examining attorney's brief.
In particular, although the examining attorney cited to
several sections of the TMEP in various office actions, it
was only in the appeal brief that citation was made to that
section of the TMEP (§1402.03) that explains that a term in
an identification of goods is not sufficiently definite if
it could clearly include items in more than one class. It
is poor examination practice not to make all the evidence
and arguments of record during examination, before the
briefing stage. See In re Red Bull GmbH, 78 USPQ2d 1375,

9 Subsequent to Examination Note 98/1, Examination Guide 3-00
General Guidelines for Acceptable Identifications of Goods and
Services, reiterated the point that an identification generally
will be acceptable if, among other requirements, it "Meets the
standards (not necessarily the language) set forth in the US ID
Manual" (emphasis in original). This Examination Guide is
currently codified in TMEP Section 1402.01(a).

Ser. No. 76451078
14
1378 n.4 (TTAB 2006) ("The preferable procedure would have
been, of course, for the definitions and arguments in
connection therewith to have been submitted during
examination."). Nonetheless, the Board normally will
consider all arguments set forth by an applicant or
examining attorney in an appeal brief; and we note that an
applicant has the option of filing a reply brief to object
to an examining attorney's late-raised argument.
Because there was no correct rationale advanced during
examination for the examining attorney's requirement that
"costumes" be amended, we consider the unstated but implied
explanations that may be gleaned from the examining
attorney's references to particular sections of the TMEP
and, in addition, from our own review of Office examination
guides and notes.
TMEP Section 1402.01 states, in part:
A written application must specify the particular
goods or services on or in connection with which the
applicant uses, or has a bona fide intention to use,
the mark in commerce. … To "specify" means to name in
an explicit manner. The identification of goods or
services should set forth common names, using
terminology that is generally understood. …
The language used to describe goods or services
should be understandable to the average person
and should not require an in-depth knowledge of
the relevant field.

Ser. No. 76451078
15
TMEP Section 1402.03, which acknowledges that
"[a]pplicants frequently use broad terms to identify" goods
or services, includes discussion of general guidelines for
identifications, many of which focus on the commercial
significance of terms. For example (emphasis added):
"[w]hen a mark is used on a number of items that make up a
homogeneous group, a term that identifies the group as a
whole would be understood as encompassing products of the
same general type that are commercially related"; and "the
conclusion that a term would clearly include items
classified in more than one class [and is therefore
unacceptable as indefinite] should not be drawn unless
reasonable, in light of the commercial relationships
between all the goods or services identified in the
application"; and that a term "sufficient for purposes of
according a filing date" may nonetheless be "too indefinite
to enable proper examination" if "the term does not have a
particular commercial meaning."
Apart from assessing the commercial significance of a
term, the Office is also concerned with clarity, ensuring
proper classification, and the scope of protection a
registration utilizing a particular term would carry:
When assessing whether an identification of goods
or services is acceptable, the following concepts
should be considered: 1. Clarity: Would a non-
Ser. No. 76451078
16
expert in the field of trademarks or in the field
of the applicant’s goods or services understand
what the item or the activity is? 2.
Classification: Is there language in the ID that
makes classification difficult or ambiguous; are
the goods or services clearly in a single class?
3. Scope: Is the scope of protection that would
be provided by a registration clear, that is,
does the language of the ID adequately define the
parameters of the goods or services in the
application?
Examination Note 98/1, supra.

The focus on clarity and proper classification is also
present in Examination Guide 3-00/TMEP Section 1402.01(a):
With few exceptions, an identification of goods
and services will be considered acceptable if it
is:
• Written in English
• Describes the goods and/or services so that an
English speaker could understand what the goods
and/or services are even if the grammar or
phrasing isn't optimal …
• Not a class heading
• In the correct class

The examining attorney would have us apply these
guidelines to the identification "costumes," rather than
the identification set forth in applicant's request for
reconsideration: "Costumes, namely masquerade costumes,
Halloween costumes, Mardi Gras costumes, and custom
costumes, in International Class 25." Clearly, the
proposed amended identification sets forth four specific
items, the first two of which ("masquerade costumes" and
"Halloween costumes") are listed in the Office's ID manual
Ser. No. 76451078
17
and therefore are acceptably definite. The examining
attorney, in denying the request for reconsideration, did
not object to "Mardi Gras costumes" as indefinite and we
consider that item just as definite as the first two.
Accordingly, the only support for the examining attorney's
argument that we must consider "costumes" to be the
operative identification is the theory that if "custom
costumes" is indefinite, then the entire amended
identification proposed in the request for reconsideration
must be rejected, notwithstanding that the majority of it
is clearly definite and in keeping with the suggestions
made by the examining attorney in prior office actions. We
disagree.
TMEP Section 715.02 states (emphasis added): "An
amendment [proposed after a final refusal of registration]
that will place the application in condition for
publication or issue, or will put the application in better
form for appeal, may be accepted and entered." Under the
circumstances, we find applicant's proposed amended
identification to be just such an amendment. The examining
attorney would have us consider as an issue in this appeal
the question whether "costumes" is definite enough.
Applicant no longer is arguing, even in the alternative,
that "costumes" per se is a definite identification.
Ser. No. 76451078
18
Accordingly, there is no reason for the examining attorney
or the Board to discuss the subject. The application is in
better form for appeal with the amended identification and
the examining attorney could have accepted this amendment
while still maintaining that the asserted indefiniteness
that shrouded "costumes" remains for "custom costumes."
As already noted, we consider the operative
identification to be that set forth by applicant in its
request for reconsideration, but to the extent there is any
doubt on the point, we reverse the examining attorney's
decision to reject the proposed amended identification. We
therefore need only consider whether "Costumes, namely
masquerade costumes, Halloween costumes, Mardi Gras
costumes, and custom costumes" is sufficiently definite as
an identification. Further, under the analytical precepts
set forth in the TMEP and Examination Note 98/1, we find
the identification is sufficiently definite.
The identification uses common names and terminology
that would be generally understood by an average person
able to speak English; in short, the identification meets
the standards of TMEP Section 1402.01(a) and the clarity
test of Examination Note 98/1, and one would not require
technical knowledge to understand it.
Ser. No. 76451078
19
We also find the goods all to be properly classified
in International Class 25, without any terms that make
classification difficult or ambiguous. Cf. In re Omega SA,
___ F.3d ___, ___ USPQ2d ___ (Fed. Cir. 2007) (No. 2006-
1234; slip op. at p. 6, available at www.fedcir.gov) ("the
scope of the term 'chronographs' is ambiguous for
registration purposes"). We note, in particular, that the
examining attorney, although characterizing "custom
costumes" as indefinite, did not say that such conclusion
was based on any ambiguity in the term that would make
classification difficult.10 We note, too, the following
statements in TMEP Section 1402.03:
the conclusion that a term would clearly include
items classified in more than one class [and is
therefore unacceptable as indefinite] should not
be drawn unless reasonable, in light of the
commercial relationships between all the goods or
services identified in the application.
…

Many goods are commonly understood to move in a
particular channel of trade or have particular
attributes. When those goods are classified in
the class that is appropriate for that common
understanding, very often no further
specification as to the nature of those goods is
necessary.

10 The examining attorney also did not state that the term was
beyond the scope of the original identification of "costumes."

Ser. No. 76451078
20
Considering the term "custom costumes" in relationship
to the other types of clothing costumes set forth in the
identification (in contrast to, for example, considering
the term in relationship to doll costumes), all of the
recited clothing costumes would be commonly understood to
be similar items moving in a particular channel of trade.11
Finally, we also find the amended identification to
clearly indicate the scope of protection that would be
provided by the registration. In this regard, we
acknowledge that the office's ID manual includes in its
listing certain types of clothing "costumes," e.g., bathing
costumes and swimming costumes, that are more clothing
items than masquerade, Halloween or role-playing items.
Moreover, we acknowledge that certain dictionary

11 As alluded to in an earlier footnote, we acknowledge that use
of the word "custom" might be taken to indicate that the
applicant is engaged in some sort of custom manufacturing
service, notwithstanding that the examining attorney did not
assert any such concern. We also note, however, that this is an
application based on applicant's stated intention to use its mark
in commerce and has not been amended to assert actual use or to
include any specimens of use. Any issue regarding whether the
applicant will eventually use its mark as a trademark for custom
clothing costumes being sold in the same manner and channels of
trade as other non-custom clothing costumes, or use its mark as a
service mark for some sort of custom manufacturing service is not
now before us. It is clear, however, that if applicant
eventually prevails in its appeal from the refusal of
registration under Section 2(d), any specimen it later submits
would have to support use of the mark as a trademark for the
clothing goods of "custom costumes," and registration of the mark
as a trademark could not be based on use of the mark as a service
mark.

Ser. No. 76451078
21
definitions of the word costume are more reflective of
clothing items: "the chiefly outer garments worn by a
person at any one time; esp : a woman's ensemble of dress
with coat or jacket."12 Reading the involved identification
as a whole, however, and considering "custom costumes" in
conjunction with the other items listed, we would not find
the term to extend the scope of protection provided by the
registration to encompass custom-made swimsuits, or
ensembles, and instead find it to encompass custom-made
items such as masquerade costumes, Halloween costumes and
Mardi Gras costumes.
In sum, we consider applicant to have complied with
the examining attorney's requirement to adopt a
sufficiently definite identification.

Likelihood of Confusion

We now turn to the substantive refusal of registration
under Section 2(d) of the Trademark Act. As noted,
applicant's mark has been refused registration in view of
the prior registration of PAPER DOLL in standard character
form for various items of children's and women's clothing,
and the prior registration of PAPERDOLL A WOMAN BY ANY

12 We take judicial notice of this definition from Webster's Third
New International Dictionary (1993) at p. 515. See University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 76451078
22
DEFINITION and design for “clothing, namely, t-shirts and
underwear.”
We analyze the issue of likelihood of confusion using
the factors that were articulated by a predecessor of our
primary reviewing court, the Court of Customs and Patent
Appeals, in the case of 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., supra.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods or services.
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
[or services] and differences in the marks").
In this case, there are differences between the marks
in the cited registrations and each will compare
differently to applicant's mark. However, the two cited
registrations cover similar goods and we consider that
subject first.
The registration for PAPERDOLL A WOMAN BY ANY
DEFINITION and design is for “clothing, namely, t-shirts
and underwear.” The registration for PAPER DOLL covers a
Ser. No. 76451078
23
wider array of clothing items, but these items are items of
children's sportswear and women's wearing apparel. In any
event, the question presented by the refusal of
registration is not whether the items in the two cited
registrations are similar, but whether consumers familiar
with the marks used for these clothing items, upon
encountering the mark PAPER DOLL PROMOTIONS as a mark for
various types of costumes, would conclude that the clothing
items and costumes have a common source or sponsorship. In
other words, would consumers familiar with branded goods of
the registrants consider applicant's goods to be related to
the goods of one or both of the registrants?
To establish that the goods in the cited registrations
and in applicant's application are related, the examining
attorney has submitted for the record 25 third-party
registrations based on use of the registered marks in
commerce, and excerpts from four internet websites. Of the
25 third-party registrations, 22 cover various clothing
items and "Halloween costumes," or "masquerade costumes,"
or "costumes for use in role-playing games."13 As the
examining attorney has explained, third-party registrations

13 Three of the third-party registrations do not list specific
types of costumes but, rather, include the term "costumes" in
lists of clothing items.

Ser. No. 76451078
24
which individually cover a number of different items and
which are based on use in commerce may serve to suggest
that the listed goods are of a type that may emanate from a
single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1469 (TTAB 1988), aff’d in unpublished opinion
88-1444 (Fed. Cir. 11/14/1988). In addition, the internet
websites are probative evidence that the four on-line
retailers are each the source of various clothing items and
various role-playing or fantasy costumes. We find this
evidence sufficient to establish that applicant's goods and
the goods in the cited registrations are related for
purposes of likelihood of confusion.
As for the marks in the two cited registrations, each
is to be compared with applicant's mark in regard to
appearance, sound when spoken, connotation and overall
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). In our comparison of
the marks, and in our articulation of 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
Ser. No. 76451078
25
on consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Comparing applicant's mark PAPER DOLL PROMOTIONS with
the PAPER DOLL mark in cited registration no. 2375912, we
find the marks to be identical in appearance and
pronunciation, but for applicant's addition of the term
PROMOTIONS. PAPER DOLL is the entirety of the mark in the
cited registration and is the dominant element of
applicant's mark. It is dominant because it comes first
and "it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and
remembered." Presto Prods., Inc. v. Nice-Pak Prods., Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988) (opposer's mark KID STUFF
and applicant's mark KIDWIPES found similar). PAPER DOLL
is also the dominant portion of applicant's mark because it
is a unitary term and is essentially arbitrary when
considered in conjunction with applicant's goods14, whereas
PROMOTIONS would be perceived more along the lines of
"enterprises" or similar terms indicative of a business.

14 We take judicial notice that "paper doll" is defined as "a
paper or cardboard representation of a person usu. in two
dimensions for children to play with." Webster's Third New
International Dictionary (1993) at p. 1633. See University of
Notre Dame du Lac, supra.
Ser. No. 76451078
26
Because PAPER DOLL would have the same essentially
arbitrary connotation when used in conjunction with the
various clothing items listed in the cited registration for
PAPER DOLL and for applicant's goods, we find the
connotation of PAPER DOLL and PAPER DOLL PROMOTIONS to be
essentially the same. The overall commercial impressions
of the marks would also be the same.
We also note that there is nothing in the
identification of goods of the cited registration for PAPER
DOLL or of the involved application that would limit
channels of trade or classes of consumers for the goods.
Therefore, applicant's various costumes could be marketed
to women and children just as readily as the clothing items
in the cited registration. We have found the goods in the
cited registration for PAPER DOLL and the goods in the
application for PAPER DOLL PROMOTIONS to be related for
likelihood of confusion purposes, the marks to be similar
in sound and appearance and to have the same connotation,
and the classes of consumers to overlap. We conclude that
the contemporaneous use of the marks for the respective
goods would be likely to cause confusion or mistake among
such consumers. We therefore affirm the refusal of
registration based on cited Registration No. 2375912.
Ser. No. 76451078
27
In contrast, we reverse the refusal of registration
based on cited Registration No. 2832820. That registration
does not present as strong a case for refusal as does the
PAPER DOLL registration.
First, the mark PAPER DOLL A WOMAN BY ANY DEFINITION
and design would not be pronounced the same as PAPER DOLL
PROMOTIONS, except for the common term PAPER DOLL; and the
marks are not similar visually because of the prominent
design element in the registered mark. Moreover, the
connotation of the registered mark is different from the
connotation of PAPER DOLL PROMOTIONS. The registered mark
has the connotation of a woman, perhaps one referred to as
a "paper doll," whereas applicant's mark does not.
The goods in cited Registration No. 2832820 are
particular clothing items, specifically, t-shirts and
underwear. These items are related to applicant's various
costumes, for the purpose of analyzing likelihood of
confusion, for the same reasons that the goods in the other
cited registration were found to be related to applicant's
goods, i.e., because of the third-party registration and
internet evidence. Nonetheless, consumers familiar with
PAPER DOLL A WOMAN BY ANY DEFINITION and design branded
goods would not be conditioned to expect a wide array of
clothing items to be marketed under the mark. Therefore,
Ser. No. 76451078
28
when such consumers would subsequently be exposed to PAPER
DOLL PROMOTIONS branded costumes, there is only a slight
chance these consumers would draw a connection between
applicant's goods and registrant's goods.15
In short, because of differences between applicant's
mark and the mark PAPER DOLL A WOMAN BY ANY DEFINITION and
design, and because the registered mark is registered for
very limited and specific items, we find that confusion
among consumers, while possible, is not likely. The
Trademark Act does not prevent registration of a mark on
the mere possibility of consumer confusion, but requires
that confusion be likely. See Bongrain International
(American) Corporation v. Delice de France Inc., 811 F.2d
1479, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987); In re The Ridge
Tahoe, 221 USPQ 839, 840 (TTAB 1983). Accordingly, we
reverse the refusal of registration based on the registered
mark PAPER DOLL A WOMAN BY ANY DEFINITION and design.
We note that applicant argued against both refusals,
but did not persuade us that both should be reversed.

15 In contrast, consumers familiar with the registered PAPER DOLL
mark, which is much more similar to applicant's mark and is
registered for a wider array of goods, would be much more likely
to assume applicant's costumes were somehow sponsored by or
associated with the source of numerous PAPER DOLL clothing items.
In other words, consumers would find it much more plausible that
the registrant of the PAPER DOLL mark had bridged the gap from
clothing items to costumes.

Ser. No. 76451078
29
Applicant did not differentiate between the cited
registrations, as we have. Rather, applicant essentially
has relied on its assertion that clothing items are
different from costumes, that the co-existence of the two
cited registrations militates against the refusals, and
that there are other marks that the USPTO has approved for
registration that include the term PAPER DOLL.
As to the last point, applicant has not provided any
copies of these purported registrations and has provided
only the serial number of a single abandoned application.
As for the co-existence of the cited marks, we do not find
this persuasive evidence that we should reverse the refusal
as to both cited registrations. As can be gleaned from our
decision, we find the commercial impressions of the two
cited marks to differ somewhat. Even if they presented the
same commercial impressions, our decision on the
registrability of applicant's mark must be based on the
record in this case and not on the fact that two arguably
similar marks have been allowed for registration by the
Office. See In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001). Finally, the differences
between the goods is an issue we have addressed in detail
in this decision. In short, applicant's cursory arguments
against the refusal of registration do not persuade us that
Ser. No. 76451078
30
we should not affirm the refusal of registration, as we
have, based on the PAPER DOLL registration.

Decision
The examining attorney's requirements for an amended
identification and amendment of classification are
reversed, as both have been provided. The refusal of
registration under Section 2(d) based on Registration No.
2832820 is reversed. The refusal of registration under
Section 2(d) based on Registration No. 2375912 is affirmed.