S2 Yachts Inc.

Trademark Trial and Appeal Board

Nov 2, 2000

No. 75387625 (T.T.A.B. Nov. 2, 2000)

Paper No.
11
GDH/gdh
11/2/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re S2 Yachts Inc.
________
Serial No. 75/387,625
_______
H. W. Reick of Price, Heneveld, Cooper, DeWitt & Litton for S2
Yachts Inc.
James A. Rauen, Trademark Examining Attorney, Law Office 103
(Michael A. Szoke, Managing Attorney).
_______
Before Quinn, Hohein and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
S2 Yachts Inc. has filed an application to register
the mark "TIARA" for the following goods:1

1 Ser. No. 75/387,625, filed on November 10, 1997, which sets forth
dates of first use of September 1977 for the goods in each class. In
the application, applicant claims ownership of Reg. No. 1,076,367,
issued on November 1, 1977, for the mark "TIARA" for "powerboats
(specifically not to the engines per se for such boats)." Such
registration, which has been renewed, sets forth a date of first use
anywhere of September 7, 1976 and a date of first use in commerce of
September 25, 1976.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/387,625
2
"tools, namely, utility knives and
multi-purpose pliers" in International
Class 8;
"pens" in International Class 16;
"expandable gear bags and boat duffel
bags" in International Class 18;
"key chains, namely, floatable key
chains" in International Class 20;
"insulated plastic glasses, coffee
mugs, [and] metal and leather coasters" in
International Class 21; and
"jackets, sweatshirts, parkas and
baseball caps" in International Class 25.
While the Examining Attorney notes that the
application is in condition for publication of the mark as to
the goods in International Classes 8 and 16,2 registration has
been finally refused under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), on the grounds that: (i) when applied to
the goods in International Class 18, applicant's mark so
resembles the mark "TIARA," which is registered for
"luggage,"3 as to be likely to cause confusion, mistake or
deception; (ii) when applied to the goods in International
Class 21, applicant's mark so resembles the marks "TIARA" and,
as reproduced below, "A TIARA EXCLUSIVE" and design,

2 However, as the Examining Attorney further notes, applicant "has
chosen not to divide the application."
3 Reg. No. 1,477,701, issued to American Tourister, Inc. on February
23, 1988, which sets forth dates of first use of January 1987;
combined affidavit §§8 and 15.
Ser. No. 75/387,625
3
which are both registered by the same registrant for the
following goods,4
"glass gift and tableware, namely, wine
sets consisting of serving tray, wine
glasses, and decanter; pitchers, serving
platters, handle baskets, console bowls,
goblets, covered candy boxes, covered
butter dishes, party serving plates, dinner
ware place settings, sugar and cream sets,
bon bon dishes, compotes, double serving
dish, water tumblers, salad servers, chip
and dip salad bowls, salt and pepper sets,
punch sets consisting of punch bowls and
cups, beverage sets consisting of pitcher
and tumblers, decanters, water bottles,
juice servers, demijohns, honey dishes, and
candy dishes";
as to be likely to cause confusion, mistake or deception; and
(iii) when applied to the goods in International Class 25,

4 Respectively, Reg. No. 1,417,482, issued to Indiana Glass Company
on November 18, 1986, which sets forth dates of first use of July 1,
1970; combined affidavit §§8 and 15; and Reg. No. 1,142,609, issued
to the same firm on December 9, 1980 with a disclaimer of
"EXCLUSIVE," which also lists "chalices" and "cookie jars" and sets
forth dates of first use of July 1, 1970; combined affidavit §§8 and
15.
Ser. No. 75/387,625
4
applicant's mark so resembles the mark "TIARA INTERNATIONAL,"
which is registered for "clothing, namely[,] T-shirts, [and]
sweaters,"5 as to be likely to cause confusion, mistake or
deception. Registration has also been refused under Section
1(a)(2) of the Trademark Act, 15 U.S.C. §1051(a)(2), on the
grounds that, with respect to the goods in International Class
18, the item "expandable gear bags" is indefinite and that,
with respect to the goods in International Class 20, the
identification thereof is indefinite.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusals to
register under Section 2(d) and, as to the refusals to
register under Section 1(a)(2), the refusal with respect to
International Class 18 is reversed and that with respect to
International Class 20 is considered to be moot.
Turning to first to the latter refusals, applicant
argues with respect to the item of "expandable gear bags" in
International Class 18 that such goods "are the type of soft
cover bags which are uniquely appropriate for use on boats
where storage can be at a minimum and flexible and expandable
bags provide the boat owner with the ability to stuff, prod

5 Reg. No. 1,987,368, issued to Tiara International, Inc. on July 16,
1996 with a disclaimer of "INTERNATIONAL," which sets forth a date of
first use anywhere of November 1991 and a date of first use in
commerce of July 1992.
Ser. No. 75/387,625
5
and push the bag and its contents into small irregularly
shaped storage areas frequently found on a vessel." According
to applicant:
The term "gear" is widely known by
sailors and boat owners alike as defining
any manner of items which they carry
aboard, typically for a day sail or cruise,
and may include items such as clothing,
food, or anything typically taken aboard a
vessel for consumption or subsequent
removal. The term "gear" is an accepted,
well-known term and does not render
expandable gear bags indefinite in the
nautical context in which the goods are
intended to be described.
The Examining Attorney, on the other hand, maintains
that the terminology "expandable gear bags" is "unacceptable
as indefinite." Asserting that the identification of goods
must specify the type of "gear" for which the bags are
intended, the Examining Attorney contends that "this
information is required because it will determine the
classification of the goods." By way of examples, the
Examining Attorney notes that "bags for hunting 'gear' are
classified in International Class 13, bags for fishing 'gear'
are classified in International Class 28, bags for travel
'gear' are classified in International Class 18, etc."
We agree with applicant, however, that the item
"expandable gear bags" is sufficiently definite to permit
proper classification in International Class 18. As confirmed
by the specimens of use, such bags are essentially in the
Ser. No. 75/387,625
6
nature of an expandable duffel bag, an all-purpose athletic,
beach or sport bag, or a carry-on gym or travel bag, all of
which are properly classified, according to the Trademark
Acceptable Identification of Goods and Services Manual of the
United States Patent and Trademark Office, in International
Class 18 irrespective of the fact that, as so identified, they
could be used to hold a variety of contents classified in
other classes. Plainly, when viewed in the context of
"expandable gear bags and boat duffel bags," the item
"expandable gear bags" denotes a specific type of general
purpose luggage just as does the term "boat duffel bags."
Consequently, we see no valid reason why applicant should be
required to particularize its expandable gear bags further by
the type of gear which might temporarily be stored and/or
carried therein. As applicant points out in its reply:
It is impossible to imagine or list all
items a boater may place in the gear bags.
A registration for luggage does not require
the registrant to list all manners of items
which the owner may carry in the luggage.
Such a burden, likewise, should not be
imposed on Applicant herein.
As to the identification of goods in International
Class 20, applicant argues that the Examining Attorney's final
requirement that its "floatable key chains" be further
clarified for purposes of proper classification as "plastic
floatable key chains" is too limiting since such goods could
Ser. No. 75/387,625
7
be made of other materials and still be properly classified in
International Class 20. The Examining Attorney, however,
presently insists in his brief that such requirement was only
a "suggestion" and that, as stated in the initial Office
action, applicant need only amend the identification to
"specify whether the key chains are metal or non-metal"
inasmuch as "[m]etal key chains are classified in
International Class 6, while non-metal key chains are
classified in International Class 20."
Since applicant, in its reply brief, indicates that
"[t]he description 'non-metallic floatable key chains' is ...
acceptable to Applicant, and this issue may now be resolved,"
the identification of goods in International Class 20 is
hereby deemed to be amended, pursuant to an Examiner's
Amendment, to read "key chains, namely, non-metallic floatable
key chains" and the refusal to register on the basis of an
indefinite identification of goods is considered moot.
Turning therefore to the refusals to register on the
grounds of likelihood of confusion, applicant basically argues
that, as to each of the refusals, it seeks to register its
"TIARA mark," which it asserts is a long-standing and famous
mark for yachts6 ranging in price "from $100,000 to well over

6 As an exhibit to its initial brief, applicant has submitted a copy
of the current catalog or brochure for its yachts and the accessories
therefor. While the Examining Attorney, in his brief, has not raised
Ser. No. 75/387,625
8
$1,000,000 when fully equipped," for a variety of collateral
goods which are sold exclusively either through boat dealers
or directly from applicant. Applicant maintains, in
particular, that as to such goods:
The name, which is presented on the
accessories of this application, is a bold
display of the TIARA® name and is an
atypical trademark usage where, for
example, when purchasing a set of
glassware, any trademark which may be
employed would be imprinted on the bottom
surface and not visible. The TIARA® mark,
on the other hand, is dominantly displayed
on the goods of the various classes of this
application. Such trademark usage in
connection with the channels of trade to
TIARA® dealers or TIARA® Yachts itself are
factors that must be considered when
determining whether or not a likelihood of
confusion could result amongst consumers of
the goods. This non-traditional use is an
integral part of the context in which the
mark TIARA® is employed.
In view thereof, and in light of its further contention that
it "has used the TIARA mark on the goods of this application
for over 20 years without any known reports of confusion or
likelihood of confusion with any of the [subject marks of] the

any objection to consideration thereof even though the evidence
plainly is untimely under Trademark Rule 2.142(d), neither has he
discussed or otherwise treated the brochure as if it constituted part
of the record in this appeal. Moreover, while applicant has
"requested that the Board, pursuant to T.B.M.P. § 712, take judicial
notice of this publicly distributed catalog," we decline to do so
inasmuch as such evidence is not proper subject matter for judicial
notice under Fed. R. Evid. 201(b) and TBMP Section 712.01. We hasten
to point out, however, that even if applicant's current catalog were
to be treated as being of record, consideration thereof would make no
difference in the outcome of this appeal.
Ser. No. 75/387,625
9
registrations cited by the ... Examining Attorney, a factor
which itself is strong evidence of a lack of any likelihood of
confusion," applicant concludes that there is no likelihood of
confusion.
We agree with the Examining Attorney, however, that
when properly analyzed, confusion is indeed likely to occur.
As the Examining Attorney correctly notes, it is well settled
that the issue of likelihood of confusion must be determined
on the basis of the goods as they are set forth in the
involved application and cited registrations. See, e.g., CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
940 (Fed. Cir. 1983); and Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). Thus, where the goods in the application at issue and
in the cited registrations are broadly described as to their
nature and type, it is presumed in each instance that in scope
the application and registrations encompass not only all goods
of the nature and type described therein, but that the
identified goods move in all channels of trade which would be
normal for such goods and that they would be purchased by all
potential buyers thereof. See, e.g., In re Elbaum, 211 USPQ
639, 640 (TTAB 1981).
Ser. No. 75/387,625
10
Furthermore, it is well established that goods need
not be identical or even competitive in nature in order to
support a finding of likelihood of confusion. Instead, it is
sufficient that the goods are related in some manner and/or
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons under situations that would give rise, because of the
marks employed in connection therewith, to the mistaken belief
that they originate from or are in some way associated with
the same producer or provider. See, e.g., Monsanto Co. v.
Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
Here, neither applicant nor the registrants have
limited the channels of trade through which the respective
goods travel and therefore would be found. While, concededly,
boat dealers and yacht producers would not seem to be
encompassed among the normal or usual channels of trade for
the various goods set forth in any of the cited registrations,
applicant has not restricted its goods so as to exclude the
channels of trade which would be customary for the
registrants' goods. Thus, applicant's "expandable gear bags
Ser. No. 75/387,625
11
and boat duffel bags"7 must be treated as suitable for sale in
the same retail stores, and hence to the same classes of
ordinary consumers, as the "luggage" sold by one of the cited
registrants. Likewise, applicant's "insulated plastic
glasses, coffee mugs, [and] metal and leather coasters" must
be deemed in legal contemplation to be available for sale at
the same retail outlets, and thus to the identical groups of
customers, as the various items of "glass gift and tableware"
offered by another of the cited registrants. The same is also
true with respect to applicant's "jackets, sweatshirts, parkas
and baseball caps," which like the "T-shirts [and] sweaters"
marketed by the third of the cited registrants, must be
considered to be sold through the same department, clothing
and/or specialty apparel stores and thus would be encountered
by the identical classes of actual and prospective purchasers.
In addition, and while we see nothing unusual in the
prominent display of a mark used in connection with collateral
merchandise since one of the principal purposes of such manner
of use is to advertise or promote the mark, we concur with the
Examining Attorney that it is pure speculation on applicant's
part that the marks of the registrants will invariably be

7 While applicant happens to market its "boat duffel bags" to owners
of its yachts, nothing in the record indicates that such goods are
suitable only for use on boats; instead, like its "expandable gear
bags," applicant's "boat duffel bags" would appear to have a wide
variety of general purpose uses for storage and/or carrying.
Ser. No. 75/387,625
12
limited in their use to an inconspicuous location on the
respective products. Like applicant, we note that as pointed
out by the Examining Attorney, "[a] registrant is free to use
its mark on its goods in any manner it wishes, and to change
that use if it so desires."
In light of the above, we concur with the Examining
Attorney that, as to the goods in International Class 18,
there is a likelihood of confusion from contemporaneous use by
applicant of the mark "TIARA" for expandable gear bags and
boat duffel bags and use by one of the cited registrants of
the identical mark "TIARA" in connection with luggage. To
state the obvious, not only are applicant's goods arguably
included within the scope of registrant's goods, but in any
event expandable gear bags, boat duffel bags and luggage would
all be utilized for carrying and temporarily storing a variety
of items which boaters, for example, would take aboard their
vessels for use on a cruise or voyage. Such closely related,
if not essentially identical, goods would be regarded, when
sold under the identical mark "TIARA," as emanating from the
same source or sponsor.
With respect to the goods in International Class 21,
we also agree with the Examining Attorney that applicant's use
of the mark "TIARA" in connection with insulated plastic
glasses, coffee mugs, and metal and leather coasters is likely
Ser. No. 75/387,625
13
to cause confusion with the use by another of the registrants
of the marks "TIARA" and "A TIARA EXCLUSIVE" and design for
various glass gift and tableware items. Applicant's mark is
obviously the same in all respects to such registrant's
"TIARA" mark and is substantially similar to the registrant's
"A TIARA EXCLUSIVE" and design mark. The latter, when
considered in its entirety, is dominated by the word "TIARA,"
which constitutes not only the most prominent element of the
mark visually, but is the principal source-indicative
component thereof given the descriptiveness of the disclaimed
term "EXCLUSIVE."8 Plainly, the contemporaneous use of the
respective marks in connection with, in particular, such
closely related drinking vessels as applicant's insulated
plastic glasses and coffee mugs and the registrant's
separately sold glass goblets and water tumblers, as well as
its wine-set glasses, punch-set cups and beverage-set

8 While it is settled that the marks at issue must be considered in
their entireties in determining whether there is a likelihood of
confusion, it is also well established that, in articulating 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 [that] the ultimate conclusion rests on consideration of the
marks in their entireties." In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For instance, "that a
particular feature is descriptive or generic with respect to the
involved goods or services is one commonly accepted rationale for
giving less weight to a portion of a mark ...." 224 USPQ at 751.
Ser. No. 75/387,625
14
tumblers, would be likely to cause confusion as to the origin
or affiliation of such products.
Finally, as to the goods in International Class 25,
we share the Examining Attorney's view that applicant's use of
its "TIARA" mark for jackets, sweatshirts, parkas and baseball
caps is likely to cause confusion with a third registrant's
use of the mark "TIARA INTERNATIONAL" in connection with T-
shirts and sweaters. The respective goods clearly are closely
related items of outerwear which, for example, would be
purchased and utilized for wearing aboard a yacht. As to the
respective marks, the word "TIARA" in applicant's mark
constitutes the dominant and distinguishing element of the
registrant's mark, when considered in its entirety, due to the
descriptiveness of the disclaimed term "INTERNATIONAL."
Applicant nevertheless argues, as previously noted,
that in over 20 years of use of its "TIARA" mark, "[a]ctual
confusion has never been reported to Applicant nor have any of
the owners of the cited registrations ... objected to
Applicant's use." Although acknowledging that "[e]vidence of
'actual confusion' is difficult to come by," applicant asserts
that "many courts give significant weight to the absence of
actual confusion as evidence of no likelihood of confusion."
While we agree with applicant that the absence of
any instances of actual confusion over a significant period of
Ser. No. 75/387,625
15
time is a factor indicative of no likelihood of confusion, it
is a meaningful factor only where the record demonstrates
appreciable and continuous use by the applicant of its mark in
the same markets as those served by the registrants under
their marks. See, e.g., Gillette Canada Inc. v. Ranir Corp.,
23 USPQ2d 1768, 1774 (TTAB 1992). Aside from the lack in this
case of a supporting affidavit or declaration from anyone
associated with applicant who has personal knowledge of the
extent of applicant's sales and the claimed absence of any
incidents of actual confusion, the asserted fact that there
has been no actual confusion would seem to be readily
explained by the fact that, according to applicant, its goods
have been available only through boat dealerships and from
applicant itself. None of the registrants' goods, by
contrast, appears to be sold or distributed in the same
channels of trade as those utilized by applicant for its
products. Moreover, as pointed out previously, applicant's
goods--as broadly identified--must be treated as being
suitable for sale in the same retail store outlets as those in
which the various goods marketed by the registrants would
typically be found. It is clear, however, that applicant's
goods have not been sold in such trade channels and that the
respective goods of applicant and each of the registrants have
therefore not coexisted under the marks at issue in the same
Ser. No. 75/387,625
16
marketplaces for any significant interval, much less with
appreciable sales therein. Thus, applicant's assertion of a
lack of any reported incidents of actual confusion is simply
not a mitigating factor in this appeal. See, e.g., Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
Finally, as to applicant's contention that the
purchasers of its yachts and the collateral goods offered with
respect thereto are highly sophisticated and discriminating,
we note that the same is not necessarily true as to the
purchasers of the registrants' goods, which basically would be
bought by ordinary consumers without the need to exercise much
care or contemplation in their selections. In any event, we
observe that, even if customers for applicant's and
registrants' goods were to be regarded as sophisticated and
discriminating buyers (despite the absence on this record of
any evidence to support such an assumption as to the goods in
issue), the fact that consumers may exercise care or thought
in choosing the respective products "does not necessarily
preclude their mistaking one trademark for another" or that
they otherwise are entirely immune from confusion as to source
or sponsorship. Wincharger Corp. v. Rinco, Inc., 297 F.2d
261, 132 USPQ 289, 292 (CCPA 1962). See also In re Decombe, 9
USPQ2d 1812, 1814-15 (TTAB 1988); and In re Pellerin Milnor
Corp., 221 USPQ 558, 560 (TTAB 1983).
Ser. No. 75/387,625
17
Decision: The refusals under Section 1(a)(2) are
respectively reversed with respect to International Class 18
and considered to be moot as to International Class 20, but
the refusals under Section 2(d) are affirmed with respect to
International Classes 18, 21 and 25.
T. J. Quinn
G. D. Hohein
G. F. Rogers
Administrative Trademark
Judges,
Trademark Trial and Appeal
Board