Russell

Trademark Trial and Appeal Board

May 30, 2006

No. 78170148 (T.T.A.B. May. 30, 2006)

Mailed: 5/30/2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Russell
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Serial No. 78170148
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Steven R. Gustavson of Baker Botts for Gordon C. Russell.

April Rademacher, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______

Before Quinn, Hohein and Cataldo, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Gordon C. Russell to
register the mark IN THE PINK for “retail store services
featuring clothing, namely, blouses, shorts and pants,
swimsuits, dresses, shirts, tops and sweaters.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with applicant’s

1 Application Serial No. 78170148, filed October 2, 2002, based
on first use anywhere and first use in commerce on December 7,
2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78170148
2
services, so resembles the previously registered mark IN
THE PINK for “handbags” as to be likely to cause confusion.2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.3
The examining attorney maintains that the marks are
identical in all respects and, moreover, the cited mark is
arbitrary. In considering the third-party registrations of
IN THE PINK marks submitted by applicant, the examining
attorney points out that none of the marks covers goods
related to the fashion and clothing fields. Thus, the
examining attorney argues, registrant’s mark is strong and
entitled to a wide scope of protection. Regarding the
goods and services, the examining attorney argues that
applicant’s retail store services featuring clothing are
related to registrant’s handbags. In connection with her
argument, the examining attorney submitted several use-
based third-party registrations as evidence suggesting that
the goods and services listed therein, namely handbags and
retail clothing store services, are of a type that may
emanate from a single source under a single mark. The
examining attorney also submitted screen shots of third-

2 Registration No. 2552696, issued March 26, 2002.
3 Applicant originally requested an oral hearing, but the request
subsequently was withdrawn.
Ser No. 78170148
3
party websites in an attempt to show that the same clothing
retailer offers both handbags and clothing, and that
retailers frequently sell clothing and accessories under
their own brand name, which also happens to be the mark
used to identify the retail services themselves.
Applicant contends that the involved marks employ a
popular and widely used figure of speech, and that the
marks are used in connection with goods and services with
which consumers will not automatically assume any
connection. Insofar as the marks are concerned, applicant
asserts that the cited mark has limited strength; in this
contention, applicant submitted six third-party
registrations of IN THE PINK marks for various goods and
services. As to the goods and services, applicant does not
dispute that third-party registrations have been obtained
for marks covering both retail store services and handbags;
applicant further acknowledges that any given number of
clothing items can be worn while carrying a handbag, and
that handbags and clothing items can be and often are sold
in the same stores. Nonetheless, applicant argues, these
facts do not establish that applicant’s retail clothing
store services and registrant’s handbags are “complementary
or companion items,” and that the differences between
applicant’s services and registrant’s goods outweigh any
Ser No. 78170148
4
similarities. Applicant submitted several third-party
registrations showing that a wide variety of goods and/or
services may emanate from the same source under the same
mark; according to applicant, the evidence shows that
virtually any two goods and/or services may originate from
the same source. Applicant argues that the mere listing of
any two items (goods and/or services) in a registration
does not necessarily mean, in the context of today’s
marketplace, that those goods and/or services are
commercially related.
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 (CCPA 1973). See also: In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key 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 (CCPA 1976). See
also: In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Ser No. 78170148
5
We first turn to consider the marks. The IN THE PINK
marks involved herein are identical in sound and
appearance. Further, although applicant contends that the
phrase “in the pink” may have a meaning in common language,4
the mark is arbitrary when used in connection with the
involved goods and services. In addition to having an
identical meaning, the marks convey the same overall
commercial impression.
In considering the involved marks, we have taken into
account the six third-party registrations of IN THE PINK
marks. The registrations cover the following goods or
services: dolls and doll clothing; household latex gloves;
pet treats; glass art; a classified section of an aviation
newspaper; and organizing and conducting events to raise
money for breast cancer research and local community breast
health awareness programs. This evidence is of limited
probative value. Firstly, the registrations are not
evidence of use of the marks shown therein and they are not
proof that consumers are familiar with such marks so as to
be accustomed to the existence of similar marks in the
marketplace. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462 (CCPA 1973); and Richardson-Vicks,

4 In this connection, applicant failed to submit a dictionary
listing or any other evidence to show the meaning of this phrase.
Ser No. 78170148
6
Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982).
Secondly, and more significantly, the registrations cover a
variety of goods or services, none of which are even
remotely related to retail clothing store services and/or
handbags. See Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, 1740 (TTAB 1991), aff’d unpub., (Appeal No.
92-1086, Federal Circuit, June 5, 1992).
In sum, the marks are identical in all respects. In
addition, the mark IN THE PINK is arbitrary as used in the
context of registrant’s handbags. Use of identical marks
(especially when, as here, the registered mark is
arbitrary) is a fact which “weighs heavily against
applicant.” In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 165, 223 USPQ 1289 (Fed. Cir. 1984); see also In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993).
We next turn to a consideration of the goods and
services. We note, at the outset of considering this du
Pont factor, that the greater the degree of similarity
between applicant’s mark and the cited registered mark, the
lesser the degree of similarity between applicant’s goods
and/or services and registrant’s goods and/or services that
is required to support a finding of likelihood of
confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB
Ser No. 78170148
7
2001). If the marks are the same, as in this case, it is
only necessary that there be a viable relationship between
the goods and/or services in order to support a finding of
likelihood of confusion. In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
Applicant has acknowledged, as noted above, that there
are third-party registrations covering both handbags and
retail clothing store services; that handbags and clothing
are used together; and that handbags and clothing often are
sold in the same stores. It is applicant’s position,
however, that given the realities of the marketplace,
consumers will not automatically assume a connection
between the sources of the respective goods and services.
Contrary to applicant’s arguments, the evidence of
record suggests that consumers will assume a common source
upon encountering the same arbitrary mark for retail
clothing store services and handbags. The examining
attorney introduced several use-based third-party
registrations showing that each entity adopted the same
mark for both handbags and retail clothing store services.
Third-party registrations that individually cover different
items and that are based on use in commerce serve to
suggest that the listed goods and/or services are of a type
that may emanate from a single source. See In re Albert
Ser No. 78170148
8
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
The examining attorney also introduced screen shots
from the on-line retail websites of Ann Taylor, Ralph
Lauren, Banana Republic and J. Crew. This evidence shows
that these retailers offer retail services through which
consumers may purchase clothing and handbags, and that all
goods and services are offered under the respective marks
mentioned.
We find that the examining attorney’s evidence
establishes that there is a viable relationship between
retail clothing store services and handbags. The evidence
suggests that consumers have been exposed to retail
clothing store services, as well as to handbags and
clothing, emanating from the same source under the same
mark.
Applicant would have us conclude that, in today’s
marketplace, the reality is virtually any two goods and/or
services may originate from the same source. Indeed, the
third-party registrations submitted by applicant show that
each registrant has applied a single mark to handbags and,
in addition, to a wide range of products and services, some
of which, admittedly, are not commercially related to
handbags. We agree with applicant’s point that the mere
Ser No. 78170148
9
fact that any two goods and/or services are listed in a
registration does not necessarily mean that they are
related.
There is, however, a relatedness between handbags and
clothing, as well as between handbags and retail clothing
store services, that may not exist with some of the other
items covered in these registrations. It is common
knowledge that handbags are fashion accessories, and are
frequently chosen to complement a clothing outfit. It also
is common knowledge (and as suggested by the evidence of
record) that handbags are sold in retail clothing stores,
and that handbags and retail clothing store services are
offered by the same entity under the same mark. As the
Federal Circuit stated in Recot, Inc. v. M.C. Becton, 214
F.3d 1332, 54 USPQ2d 1895, 1898 (Fed. Cir. 2000), “even if
the goods in question are different from, and thus not
related to, one another in kind, the same goods can be
related in the mind of the consuming public as to the
origin of the goods. It is this sense of relatedness that
matters in the likelihood of confusion analysis.” See also
Bose Corp. v. QSC Audio Products, Inc., 293 F.2d 1367, 63
USPQ2d 1303, 1309-10 (Fed Cir. 2002) [“Hence the products
as described in the pertinent registrations are not the
same. But they are related as required by du Pont.”]; and
Ser No. 78170148
10
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1004 (Fed. Cir. 2002) [“even if the goods
and services in question are not identical, the consuming
public may perceive them as related enough to cause
confusion about the source or origin of the goods and
services.”]. Further, handbags are bought by, and retail
clothing store services rendered to, the same classes of
purchasers. These consumers include ordinary consumers who
would not necessarily exercise a great deal of care in
their purchasing decisions.
We conclude that consumers familiar with registrant’s
handbags sold under its arbitrary mark IN THE PINK would be
likely to believe, upon encountering applicant’s retail
clothing store services rendered under the identical mark,
that the goods and services originated with or are somehow
associated with or sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., supra.
Decision: The refusal to register is affirmed.