PPHU “SELF” SpÌlka Cywilna, Andrzej Kucharski, Pawel Szczesniak and Kamil Kucharski

Trademark Trial and Appeal Board

Mar 20, 2008

No. 79023019 (T.T.A.B. Mar. 20, 2008)

Mailed:
March 20, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PPHU "SELF" Spólka Cywilna, Andrzej Kucharski, Pawel
Szczesniak and Kamil Kucharski
________

Serial No. 79023019
_______

Jan Tamulewicz of Katten Muchin Rosenman LLP for PPHU
"SELF" Spólka Cywilna, Andrzej Kucharski, Pawel Szczesniak
and Kamil Kucharski.

W. Wendy Jun, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Hohein, Bucher and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

PPHU "SELF" Spólka Cywilna, Andrzej Kucharski, Pawel
Szczesniak and Kamil Kucharski (applicant), a partnership
organized under the laws of Poland, has applied to register
the mark shown below for, among other goods and services,
“women's, men's, and children's clothing, namely swim
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 79023019
2
suits, beachwear, swimwear and underwear” in International
Class 25.1

The application includes the following statements: (1)
“The mark consists of of two concentric circles resembling
a life float in the colors blue and white. In the center
of the circles is a dolphin in the colors blue and white
jumping over blue wavy lines, resembling water. Between
the concentric circles on top is the wording SELF in the
color blue. Between the concentric circles on the bottom
is the wording COLLECTION in the color blue.” and (2) “The
color(s) blue and white is/are claimed as a feature of the
mark.” Applicant has also disclaimed “COLLECTION.”
The Examining Attorney has finally refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), based on a likelihood of confusion with two
registrations owned by different parties:

1 Application Serial No. 79023019, filed February 27, 2006, under
Trademark Act Section 66, 15 U.S.C. § 1141, based on International
Registration No. 0802368. The application also covers International
Classes 16, 20, 26, 35 and 40 which are not relevant here because the
refusal is limited to International Class 25.
Serial No. 79023019
3
Registration No. 1663404 for the mark shown below
for “women's magazines” in International Class 16
and “T-shirts and bodyshirts” in International
Class 25.2 The registrtation issued on November
5, 1991 and has been renewed.

and

Registration No. 877048 for the mark SELF in
typed form for “babies' knitted pullovers,
cardigrans (sic), dresses, rompers; infants'
dresses, knitted jumpers, cardigans, rompers,
leggings; knitted girls' blouses; ladies' knitted
shell blouses, knitted cardigans, knitted
sweaters, coats, and shift dresses” in
International Class 25. The registration issued
on September 16, 1969 and has been renewed.

Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
LIKELIHOOD OF CONFUSION
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office … as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion …” 15 U.S.C. § 1052(d).
In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1977), the Court set forth the factors

2 The Class 16 goods are not relevant to the refusal at issue here.
Therefore, we will not discuss those goods further.
Serial No. 79023019
4
to consider in determining likelihood of confusion. Here,
as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods of
applicant and registrants. 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 and differences in
the marks.”). Below we will consider each of the factors
as to which applicant or the Examining Attorney presented
arguments or evidence.
The Goods
The goods of applicant and the registrants need not be
identical to find a likelihood of confusion under Trademark
Act Section 2(d). They need only be related in such a way
that the circumstances surrounding their marketing would
result in relevant consumers mistakenly believing that the
goods originate from the same source. In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
See also On-Line Careline Inc. v. America Online Inc., 229
F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000).
Furthermore, in comparing the goods we must consider
the goods as identified in the application and cited
registrations. See Octocom Systems, Inc. v. Houston
Serial No. 79023019
5
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 [and registrations] 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.”).
Applicant addressed the relationship between its goods
and the goods in the cited registrations for the first time
in its reply brief. Applicant argues that its goods are
not related to those in the cited registrations because
“… beachwear is most often marketed seasonally, and is
often physically set apart from other clothing displays.”
Reply Brief at unnumbered page 2. Applicant also disputes
the Examining Attorney’s contention that bodyshirts are a
substitute for underwear or swimwear.
The Examining Attorney argues that applicant’s goods
are related to the goods in both cited registrations. To
Serial No. 79023019
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support her position, the Examining Attorney has submitted
numerous third-party registrations for marks for goods of
the same kinds as applicant’s goods, as well as the goods
identified in the two cited registrations. However, none
of the third-party registrations the Examining Attorney
provided for this purpose were based on use, nor have any
of them matured to a point where an affidavit of use has
been filed. Accordingly, these registrations are not
probative of the issue before us, that is, whether the same
marks are used on the types of goods at issue here. Cf. In
re TSI Brands Inc., 67 USPQ2d 1657, 1659 (TTAB 2002); In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993). Therefore, we have not relied on these
registrations in our decision here. The Examining Attorney
has also provided statistical information regarding the
numbers of records the Examining Attorney located in
searches of USPTO records where both applicant’s goods and
the goods in either of the cited registrations also
appeared. These statistics are likewise not probative of
the issue before us, and we have also not relied on this
evidence in our decision here.
Nonetheless, applicant’s goods are identified as
“women's, men's, and children's clothing, namely swim
suits, beachwear, swimwear and underwear.” The relevant
Serial No. 79023019
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goods in the cited, special-form SELF registration are
identified as “T-shirts and bodyshirts”; the goods in the
cited, typed SELF registration are identified as “babies'
knitted pullovers, cardigrans (sic), dresses, rompers;
infants' dresses, knitted jumpers, cardigans, rompers,
leggings; knitted girls' blouses; ladies' knitted shell
blouses, knitted cardigans, knitted sweaters, coats, and
shift dresses.”
First, with regard to the cited, special-form SELF
registration, we conclude that the goods in that
registration overlap with applicant’s goods. Applicant’s
goods include “underwear”; the cited registration includes
“t-shirts.” The Merriam-Webster’s Collegiate Dictionary
(11th ed. 2003) defines “t-shirt,” in relevant part, as “… a
collarless and short-sleeve or sleeveless usu. cotton
undershirt…”3 Also, applicant’s inclusion of both underwear
and the other clothing items in its own application
indicates that underwear, which encompasses t-shirts, is
related to those other goods also. Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed.
Cir. 2002). This contradicts applicant’s assertion that

3 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

Serial No. 79023019
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“beachwear” is a separate class of goods in no way
associated with other types of clothing.
Also, as the Examining Attorney notes, the Board has
often held various types of clothing related. See, e.g.,
Jockey Intl., Inc. v. Mallory & Church Corp., 25 USPQ2d
1233, 1236 (TTAB 1992) (underwear and neckties held
related); In re Pix of America, Inc., 225 USPQ 691, 692
(TTAB 1985) (women’s shoes and outer shirts held related)
In re Mercedes Slacks, Ltd., 213 USPQ 397, 398 (TTAB 1982)
(trousers and hosiery held related); In re Cook United,
Inc., 185 USPQ 444, 445 (TTAB 1975) (ladies’ pantyhose and
hosiery held related to men’s suits, coats and trousers).
Accordingly, we conclude that applicant’s goods encompass
and are otherwise related to the goods identified in the
cited special-form SELF registration.
Next, with regard to the cited, typed SELF
registration, we also conclude that applicant’s goods are
related to the goods in that registration. All of
applicant’s goods are identified as being for men, women
and children. In particular, applicant’s beachwear and
swimwear are related to the knitted girls' blouses, ladies'
knitted shell blouses, knitted cardigans, knitted sweaters,
and shift dresses identified in the cited registration.
The respective items are similar items of casual clothing
Serial No. 79023019
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directed to the same wearers and purchasers. Similarly,
applicant’s items for children are related to the items in
the cited registration for babies and infants simply
because babies and infants are children and the respective
items would thus be purchased under similar circumstances
by the same potential purchasers. We do not find
applicant’s argument that beachwear is seasonal and sold
separately persuasive. Applicant’s goods are not limited
to beachwear or like items; the goods also include
underwear. Also, depending on the location, beachwear
could be a year-round product, and the clothing identified
in the cited registration could also vary by season. More
importantly, applicant’s goods and those identified in the
cited registration are all common clothing items which
would be purchased and worn by the same individuals.
Again, the Board has often found such goods related. See,
e.g., Jockey Intl., Inc. v. Mallory & Church Corp., 25
USPQ2d at 1236 and cases cited therein.
Accordingly, we conclude that applicant’s goods are
related to the goods identified in the cited, typed SELF
registration also.
The Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
Serial No. 79023019
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the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). While we must consider
the marks in their entireties, it is entirely appropriate
to accord greater importance to the more distinctive
elements in the marks. As the Court of Appeals for the
Federal Circuit observed, “… in articulating reasons for
reaching a conclusion on the issue 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
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
Serial No. 79023019
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impression of trademarks.” Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
Applicant argues that its mark is not similar to
either of the cited marks in appearance, sound, connotation
or commercial impression. Applicant argues further that
the Examining Attorney failed to compare the marks in their
entireties, and more specifically, that the design element
is dominant in its mark and that COLLECTION is significant
in distinguishing its mark from both cited marks. In
particular, applicant argues that its mark differs from the
cited marks in that “… Applicant’s use of the word ‘self’
acts as a modifier of the COLLECTION portion of the mark,
lending a connotation of a collection belonging to
oneself.” Reply Brief at unnumbered page 3.
The Examining Attorney argues that the marks are
similar. The Examining Attorney also offers the same
arguments with regard to both cited marks. Specifically,
the Examining Attorney argues that SELF is the dominant
element in applicant’s mark and in both cited marks and
that applicant’s design and the presence of COLLECTION in
its mark is insufficient to distinguish applicant’s mark
from either of the cited marks.
We conclude that applicant’s mark is similar to both
cited marks. Although there are specific differences in
Serial No. 79023019
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appearance and sound, we find that the similarities in
appearance and especially in sound, connotation and
commercial impression outweigh those differences when we
consider the marks in their entireties.
The same essential analysis applies to both cited
registrations. First, we disagree with applicant’s
assertion that the design element is dominant in its mark.
While the design is prominent in appearance, it is still
primarily the literal element, SELF COLLECTION, which
potential purchasers will rely on to identify the source of
the goods. See In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997). In this
case the common axiom regarding marks with both literal and
design elements applies, that is, literal elements are more
significant because purchasers use the literal elements in
requesting the goods. See CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 200 (Fed. Cir. 1983).
Furthermore, we reject applicant’s arguments regarding
the significance of COLLECTION in its mark. It is
disclaimed, but more importantly, the Examining Attorney
has demonstrated, through the submission of third-party
registrations, that COLLECTION is commonly used in the
clothing field and other fields descriptively. It merely
identifies a grouping of related apparel. For example, The
Serial No. 79023019
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Merriam-Webster’s Collegiate Dictionary (11th ed. 2003)
defines “collection,” in relevant part, as “… a set of
apparel designed for sale usu. in a particular season…”4
Therefore, we conclude that COLLECTION, which is
descriptive in this context, is insufficient to distinguish
applicant's mark from either of the cited registered marks.
In re Dixie Restaurants Inc., 41 USPQ2d at 1534-35.
Furthermore, in view of this evidence, we reject
applicant’s argument that potential purchasers will
perceive SELF COLLECTION as connoting a collection
belonging to oneself. It is more likely that, in this
context, potential purchasers would only perceive the
common descriptive meaning of COLLECTION. Applicant’s
display, which separates SELF from COLLECTION, reinforces
this impression.
Finally, when we consider applicant’s mark and the two
cited registered marks in their entireties, we conclude
that applicant’s mark is similar to both cited, registered
marks.

4 Id.

Serial No. 79023019
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Strength of the Cited Marks
In an attempt to show that SELF is diluted, and
therefore weak, in the clothing field, applicant has
submitted copies of the following Class 25 registrations:
Registration No. 0526196 for the mark “SELF-
CONFORMING” in special form for “men’s hats”;

Registration No. 1663485 for the mark SELF HELP
in typed form for “women’s swimsuits”;

Registration No. 1771562 for the mark SELF-
EXPRESSION in typed form for “bras and panties”;

Registration No. 2578967 for the mark OUTER SELF
in typed form for “clothing, namely, vests,
jackets, parkas, pants, Nordic and Alpine ski
suits; accessories, namely, hats, gloves,
mittens, scarves, neck gaiters, face masks and
socks”;

Registration No. 2311586 for the mark SELF ESTEEM
in typed form for “clothing, namely jackets,
sweaters, vests, blouses, shirts, tops, pants,
shorts and skirts”;

Registration No. 2736826 for the mark INNER SELF
in typed form for “clothing, namely bras,
panties, slips, girdles, lingerie; sleepwear and
loungewear”; and

Registration No. 2600111 for the mark BU SELF in
typed form for “clothing, namely t-shirts, caps
and sweatshirts.”

We find applicant’s arguments, in this regard,
unpersuasive. In the case of each of the marks in the
registrations applicant submitted, “SELF” is combined with
another term to create a phrase which has a distinctive
meaning. The phrase, in each instance, is more than the
Serial No. 79023019
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sum of its parts; it has a known meaning which creates a
distinctive commercial impression. In contrast, the
addition of the descriptive, disclaimed term COLLECTION in
applicant’s mark does nothing to distinguish its mark from
the cited, registered marks.
Also, in this case, the marks in these registrations
do not demonstrate that “SELF” has a consistent descriptive
or highly suggestive meaning in relation to the goods such
that relevant purchasers would rely on other elements in
the marks to distinguish the source of the goods. In re
Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991).
Furthermore, there is no signficant additional literal
element present which would effectively distinguish
applicant’s mark from either of the cited, registered
marks. Cf. Knight Textile Corp. v. Jones Investment Co.,
75 USPQ2d 1313 (TTAB 2005). Accordingly, we conclude, on
this record, that both cited registered marks are entitled
to the ordinary scope of protection accorded registered
marks.
Applicant has also argued that the coexistence of the
two prior registrations cited here indicates that there
would not be a likelihood of confusion between applicant’s
mark and either of the cited marks. However, we must
decide each case on the record before us; decisions on
Serial No. 79023019
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prior applications do not dictate a particular decision
here. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564 (Fed. Cir. 2001).
CONCLUSION
Finally, based on all evidence of record in this case
related to the du Pont factors, we conclude that there is a
likelihood of confusion between applicant’s SELF COLLECTION
and Design mark when used in connection with “women's,
men's, and children's clothing, namely swim suits,
beachwear, swimwear and underwear” and the cited, special-
form SELF mark when used in connection with “T-shirts and
bodyshirts” and the cited, typed SELF mark when used in
connection with “babies' knitted pullovers, cardigrans
(sic), dresses, rompers; infants' dresses, knitted jumpers,
cardigans, rompers, leggings; knitted girls' blouses;
ladies' knitted shell blouses, knitted cardigans, knitted
sweaters, coats, and shift dresses.”
Decision: We affirm the refusal to register
applicant’s mark in Class 25 under Trademark Act Section
2(d) based on both cited registrations.