Right-On Co., Ltd.

Trademark Trial and Appeal Board

Mar 31, 2008

No. 79011373 (T.T.A.B. Mar. 31, 2008)

Hearing: Mailed:
February 14, 2008 March 31, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Right-On Co., Ltd.
________

Serial No. 79011373
_______

James A. Oliff of Oliff & Berridge, PLC for Right-On Co.,
Ltd.

Melissa Valillo, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Hohein, Zervas, and Walsh, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Right-On Co., Ltd. (“applicant”) has applied to
register the stylized mark1

on the Principal Register for the following goods, as
amended: “[c]lothing, namely, jeans, t-shirts, polo
shirts, sweat shirts, sweaters, gloves and socks; belts;

1 Serial No. 79011373, filed on April 21, 2005 under the Madrid
Protocol, Section 66(a) of the Trademark Act, 15 U.S.C. §
THIS OPINION IS NOT
A PRECEDENT OF THE
T.T.A.B.
Ser No. 79011373
2
footwear, namely, sports shoes, mountaineering boots and
sandals; headgear for wear, namely, caps and hats” in
International Class 25.
Registration of applicant's mark has been refused
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), in view of Registration No. 2653702 (issued on
the Principal Register on November 26, 2002) for the
stylized mark

for “clothing, namely, t-shirts, shirts, blouses, jackets,
vests, coats, overcoats, raincoats, pajamas, pants, jeans,
overalls, jumpsuits, unitards, skirts, dresses, shorts,
sweatshirts, sweatpants, sweaters, belts, scarves, shoes,
and headwear, namely, caps and hats.”
After the examining attorney made the refusal final,
applicant filed this appeal. Both applicant and the
examining attorney have filed briefs, and the Board

1141(f), based on International application Serial No. 2005-
030523, filed on April 6, 2005.
Ser No. 79011373
3
conducted an oral hearing on February 14, 2008. The
refusal to register is affirmed.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out 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., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003); Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We first consider applicant’s and registrant’s goods
which are, at least in part, identical. Both applicant and
registrant’s identifications of goods include jeans, t-
shirts, belts, caps, hats, sweaters and sweatshirts.
Further, applicant's “polo shirts” are included within
registrant’s “shirts,” and applicant’s “sports shoes,
mountaineering boots and sandals” are included within
registrant’s “shoes.” Applicant’s other goods, i.e.,
gloves and socks, are closely related to registrant’s
Ser No. 79011373
4
clothing items inasmuch as gloves and socks could be used
in association with registrant’s clothing items.
Turning to the channels of trade and classes of
consumers, since the goods are in part identical or
overlapping, we must presume that the channels of trade and
purchasers would be the same. In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”). See also Genesco Inc. v. Martz, 66 USPQ2d
1260, 1268 (TTAB 2003) (“Given the in-part identical and
in-part related nature of the parties’ goods, and the lack
of any restrictions in the identifications thereof as to
trade channels and purchasers, these clothing items could
be offered and sold to the same classes of purchasers
through the same channels of trade”).
Next, we look at the marks themselves to assess their
similarities and dissimilarities. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (“The first
DuPont factor requires examination of ‘the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial
impression.’”). Of course, when we are considering the
Ser No. 79011373
5
marks, we must consider them in their entireties rather
than simply comparing their individual components.
Further,
The test 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.

Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
1844, 1848 (TTAB 2004). See also Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573,
574 (CCPA 1973). We also keep in mind that when marks
would appear on identical goods, as is the case in part
herein, the degree of similarity necessary to support a
conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992).
We find that the dominant feature in registrant’s mark
is the literal portion, i.e., the wording HONEYSUCKLE, and
not what applicant characterizes as “the blooming flower of
a honeysuckle plant.” Because it is by the wording in the
mark that consumers will refer to or call for the goods,
and because the depiction of the honeysuckle flower
Ser No. 79011373
6
reinforces the wording, the word HONEYSUCKLE will be
recognized and used by purchasers as the primary means of
source identification. As the dominant feature of
registrant’s mark, the wording HONEYSUCKLE is accorded more
weight in our comparison of the marks under the first du
Pont factor. See In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004).
The primary area of disagreement between applicant and
the examining attorney lies in the connotation and
commercial impression of applicant's stylized HONEYSUCKLE
ROSE mark. The examining attorney contends that “the words
that comprise the applicant's mark identify separate and
distinct types of plants.” Brief at unnumbered p. 6.
Applicant contends that while the word HONEYSUCKLE alone
refers to a “flower,” the term “honeysuckle rose” refers to
“a term of endearment,” see brief at p. 4, or “a woman or
‘feminine sweetness.’” See reply brief at p. 4.
Applicant’s contention regarding its mark is not supported
by any record evidence. The lyrics to an eighty-year-old
song entitled “Honeysuckle Rose” by Fats Waller and Andy
Razaf, which applicant recites for the first time in its
brief to show that applicant's mark refers to “a term of
endearment” or “a woman or ‘feminine sweetness,’” are not
Ser No. 79011373
7
part of the evidentiary record.2 Thus, applicant's
contention, not being supported by any evidence, is not
persuasive.
Additionally, applicant argues that:
Used in music and film, the term HONEYSUCKLE ROSE
has taken on … cultural significance as evidenced
by the numerous businesses that have appropriated
this mark in their business names. Applicant is
employing this cultural meaning in its use of the
mark HONESYSUCKLE ROSE. As such, when consumers
encounter Applicant’s mark, completely different
mental imagery is evoked than if the same
consumers encountered the cited mark. Brief at
p. 5.

For support that “honeysuckle rose” has “cultural
significance,” applicant points to two versions of the song
“Honeysuckle Rose” by “jazz superstar” Louis Armstrong, and
the “strong following” among Willie Nelson’s fan base for
the movie “Honeysuckle Rose” which stars Mr. Nelson and Amy
Irving. We give such statements by applicant no weight
because they too are not supported by any record evidence.
The evidence which is in the record which bears on
applicant's “cultural significance” argument fails to
persuade us of any such “cultural significance.” Such
evidence is extremely limited, consisting only of one
article for “honeysuckle rose” from wikipedia.org and a

2 The examining attorney’s objection, on the ground of
untimeliness, regarding these lyrics is sustained. Trademark
Rule 2.142(d).

Ser No. 79011373
8
handful of webpages showing various business names which
include “Honeysuckle Rose.”
Wikipedia lists the following three separately
discussed entries for “Honeysuckle Rose,” none of which are
persuasive for the reasons set forth below.
“‘Honeysuckle Rose,’ a song from 1928
written by Fats Waller, considered a
jazz standard.”

The reference to the song from 1928 says nothing about the
current popularity of the eighty-year-old song “Honeysuckle
Rose” among the general population; Wikipedia’s
characterization of the song as a “jazz standard” alone,
without further support, simply is not persuasive.
“Honeysuckle Rose, the title to a 1980
movie, starring Willie Nelson, Amy
Irving, and Priscilla Pointer.”

The entry regarding the movie is too brief and does not
identify any critical acclaim or reflect on the popularity
of the thirty-year-old movie, particularly today.
“The name of Willie Nelson’s famous
touring bus.”

Without more, we do not accept that the name of a touring
bus is “culturally significant.” Also, we give limited
weight to Wikipedia’s statement that the name of the
touring bus is famous; Wikipedia is a collaborative online
encyclopedia and a Wikipedia article at any given time may
Ser No. 79011373
9
contain significant misinformation. See In Re IP Carrier
Consulting Group, 84 USPQ2d 1028 (TTAB 2007). In addition,
there is no corroborating evidence that indicates that the
bus is famous, and it may be that Mr. Nelson’s bus may have
been named after Mr. Nelson’s movie of the same name.
Turning to the webpages that are in the record, we
find the webpages to be of limited probative value. One
webpage is for the “Honeysuckle Rose Cottage” in British
Columbia, Canada; clearly, however, a cottage in Canada
hardly shows any “cultural significance” of the term in the
United States. The other uses of “honeysuckle rose” are
too few in number for us to conclude that there is any
“cultural significance” to the term. Further, we do not
consider the combination of the webpages and the Wikipedia
article as establishing any “cultural significance” of
“honeysuckle rose”; that is, we are not persuaded that the
term has “cultural significance” simply because it has been
used to an unknown extent for eighty years and is the name
of a song, a touring bus, a movie and a handful of
businesses.
Inasmuch as applicant has not persuaded us that
HONEYSUCKLE ROSE has any other meaning, we find that the
meaning of the mark taken as a whole to the typical
consumer of applicant's and registrant’s goods is the
Ser No. 79011373
10
common meaning of the two terms, namely, an arbitrary
combination of the names of two plants or flowers.
HONEYSUCKLE in both marks therefore has the same
connotation. Due to this shared connotation of
HONEYSUCKLE, and because the addition of ROSE does not
change the connotation of HONEYSUCKLE, we find the marks to
be similar in overall connotation and commercial
impression.
Applicant points out that the marks differ in
appearance and sound. Certainly there are differences in
the appearance of the marks in view of registrant’s design
and the different stylization of the lettering in the
marks, which in the case of applicant's mark, is rather
ordinary. There also are differences in the sound of the
marks in view of applicant's addition of ROSE to
HONEYSUCKLE. However, the differences in appearance and
sound of the marks are outweighed by similarities in
connotation and commercial impression of the marks created
by the shared term HONEYSUCKLE.
In view of the foregoing, we find that the marks taken
as a whole are similar.
Applicant also argues at p. 6 of its brief that “the
co-existence of … two marks on the U.S. Trademark Register
for related or identical goods is not without precedent,”
Ser No. 79011373
11
citing to third-party registrations for HONEYSUCKLE and
HONEYSUCKLE ROSE. There is no evidentiary support for
applicant's argument inasmuch as applicant has not
submitted copies of the registrations. However, even if it
had, we would reject this argument because each case must
be decided on its own merits, and previous decisions by
examining attorneys are not binding on the Office or the
Board. See In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001); In re Sunmarks Inc., 32
USPQ2d 1470 (TTAB 1994); In re National Novice Hockey
League, Inc., 222 USPQ 638 (TTAB 1984).
Thus, upon consideration of the relevant du Pont
factors, as well as the evidence of record and the
arguments of the examining attorney and applicant, we
conclude that when purchasers who are familiar with
registrant’s mark encounter applicant’s mark on identical
and closely related goods, they are likely to be confused.
Decision: The examining attorney’s refusal under
Section 2(d) of the Trademark Act to register applicant’s
mark is affirmed.