Salute LLC

Trademark Trial and Appeal Board

Jul 31, 2006

No. 78466753 (T.T.A.B. Jul. 31, 2006)

Mailed: July 31, 2006
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Salute LLC
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Serial No. 78466753
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Michael D. Hobbs, Jr. and Daniele E. Bourgeois of Troutman
Sanders LLP for Salute LLC.

George M. Lorenzo, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Hohein and Cataldo, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Salute LLC has filed an application to register on the
Principal Register the mark "SALUTE" for "clothing, namely,
shirts, pants, shorts, skirts, dresses, sweaters, vests,
cardigans, jackets, coats, gloves, scarves, underpants, bath
robes, hats, caps, [and] shoes" in International Class 25.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "SALUTE OLEG CASSINI," which is registered on the Principal

1 Ser. No. 78466753, filed on August 12, 2004, which is based an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 78466753
2
Register in standard character form for "wearing apparel, namely,
shirts, pants, sweaters, jackets, shorts, warm-up suits and
jeans" in International Class 25,2 as to be likely to cause
confusion, or to cause mistake, or to deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in
any likelihood of confusion analysis, two key considerations are
the similarity or dissimilarity in the goods or services at issue
and the similarity or dissimilarity of the respective marks in
their entireties.3 See also In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Here, inasmuch
as applicant's articles of clothing are identical in part (i.e.,
shirts, pants, shorts, sweaters and jackets) and are otherwise

2 Reg. No. 2,664,950, issued on December 24, 2002, which sets forth a
date of first use anywhere and in commerce of December 1, 1997 and
states that: "'Oleg Cassini' is the name of a living individual whose
consent is of record."

3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
Ser. No. 78466753
3
closely related in a commercial sense to registrant's items of
wearing apparel, and therefore would be marketed and sold to the
same classes of ordinary consumers through the same channels of
trade (e.g., clothing stores, department stores and mass
merchandisers),4 the primary focus of our inquiry is on the
similarities and dissimilarities in the respective marks, when
considered in their entireties, along with, as applicant also
asserts, the additional du Pont factor of the number and nature
of similar marks in use on similar goods.
Turning first to consideration of the respective marks,
applicant contends in its initial brief that confusion is not
likely because such marks differ in sound, appearance and
commercial impression, due to "the inclusion of the Cited
Registrant's well-known house mark OLEG CASSINI in the Cited
Mark," and the weakness of the shared term "SALUTE." Applicant,
while noting that the Examining Attorney "has focused on a line
of cases that support the position that 'Where marks are
virtually the same, the addition of a house mark is more likely
to add to the likelihood of confusion that [sic] to distinguish
the marks'," argues that the marks at issue are distinguishable
because:
[A]s recognized in Section 1207[01.](b)(iii)
of the TMEP, the Federal Circuit has held
that general exceptions to the above rule
exist where: (1) the marks in their
entireties convey significantly different

essential characteristics of the goods and differences in the marks."
192 USPQ at 29.
4 Applicant, we note, does not contend otherwise in either its initial
or reply briefs.

Ser. No. 78466753
4
impressions, or (2) the matter common to the
marks is not likely to be perceived by
purchasers as distinguishing source "because
it is merely descriptive or diluted." See,
e.g., Shen Manufacturing Co. v. Ritz Hotel
Ltd., [393 F.3d 1238,] 73 U.S.P.Q.2d 1350
(Fed. Cir. 2004). .... The Appellant
submits that in the instant matter, both
exceptions apply[,] negating any likelihood
of confusion between the respective marks.

First, the inclusion of the Registrant's
well-known house mark "OLEG CASSINI" in the
Cited Mark creates and conveys a different
commercial impression than that of the
Appellant's Mark and negates any likelihood
of confusion between the respective marks.
As demonstrated in Appellant's previous
Responses, "OLEG CASSINI" is the name of a
particular individual who enjoys world renown
for his elegant fashion designs. In
addition, the owner of the Cited Mark owns 16
other applications or registrations for
"CASSINI" and/or "OLEG CASSINI" variant
marks. .... Clearly, therefore, consumers
are readily familiar with the "OLEG CASSINI"
portion of the Cited Mark and are likely to
look to that portion as the dominant source
identification component. As such, the
connotation and commercial impression of the
Cited Mark is that the terms identified
thereby serve as a commemoration of or a note
of respect to Mr. Cassini and his
contributions to the fashion industry. The
Appellant's Mark, on the other hand, is
totally devoid of any suggestion of a
connection with Mr. Cassini or any other
person. As such, the marks convey
significantly different commercial
impressions and simultaneous use of SALUTE by
the owner of the Cited Mark and the Appellant
is not likely to result in consumer confusion
between the respective marks.

Second, as demonstrated above, the
Appellant submits that the use of the
"salute" component in the respective marks is
relatively common in conjunction with
clothing and thus, does not function as the
dominant portion of the Cited Mark. ....
Rather, based on Mr. Cassini's notoriety and
the use of and registration for "CASSINI" and
"OLEG CASSINI" variant marks by the owner of
Ser. No. 78466753
5
the Cited Mark, the "OLEG CASSINI" portion of
the Cited Mark is much more likely to command
the consumer's notice and power of recall
than the term "salute." Thus, consumers are
not likely to encounter Appellant's Mark and
the Cited Mark and focus solely on the common
SALUTE component in the marks and be confused
as to the source or sponsorship of the goods
identified thereby.

As to the asserted weakness of the marks at issue,
applicant maintains that:
In the instant matter, the term "salute"
is commonly used in connection with clothing
and wearing accessories to suggest a
"tribute" or homage. Specifically, the
Appellant has provided evidence of three
registrations and applications incorporating
the word "salute," owned by different
entities, currently co-existing on the PTO
register. .... In each of these instances,
the word "salute" suggests a tribute to
something or someone--in one case, to
America's heroes, and in another to American
designers and in yet another to an
indiscriminate reference. Likewise, the use
of "salute" in the Cited Mark refers to the
famous designer Oleg Cassini. The PTO has
thus determined that the public can
distinguish between various uses of "salute"
based on the context in which they are used.

....

The Appellant submits that the
significant recurrence of registered and
approved SALUTE variant marks that exist on
the Principal Register confirms that the PTO
has recognized that although entitled to some
protection, the Cited Mark is entitled to a
relatively narrow scope of protection and
that no one owner should be allowed to
appropriate SALUTE for exclusive use in
connection with clothing.

We agree, however, with the Examining Attorney's
conclusion that confusion is likely. As set forth in TMEP
Section 1207.01(b)(iii) (4th ed. 2005), "[i]t is a general rule
Ser. No. 78466753
6
that likelihood of confusion is not avoided between otherwise
confusingly similar marks merely by adding or deleting a house
mark ...." See, e.g., In re Dennison Mfg. Co., 229 USPQ 141, 144
(TTAB 1986) and cases cited therein. Indeed, it has been held in
this regard that "[w]here the marks are otherwise virtually the
same, the addition of a house mark or ... a surname ... is more
likely to add to the likelihood of confusion than to aid to
distinguish the marks" at issue. Key West Fragrance & Cosmetic
Factory, Inc. v. Mennen Co., 216 USPQ 168, 170 (TTAB 1982). The
same would likewise be true where one of the respective marks
includes, as a house mark or otherwise, the name of a fashion
designer or other notable person. See, e.g., In re Riddle, 225
USPQ 630, 632 (TTAB 1985), in which the Board, in finding that
confusion was likely between the mark "RICHARD PETTY'S ACCUTUNE"
and design for "automotive service centers specializing in engine
tune-ups and oil changes" and the mark "ACCUTUNE" for various
items of "automotive testing equipment," pointed out that:
Applicant urges that, because of the fame of
Richard Petty in conjunction with automobile
racing, it is the "RICHARD PETTY'S" portion
of applicant's mark which dominates the mark
and which would cause it to be easily
distinguishable from the mark shown in the
cited registration. The problem with
applicant's argument is that, while the name
"Richard Petty" might well be a famous one in
connection with automobiles and automobile
racing, that fact does not diminish the
likelihood of confusion in this case. In
particular, those who encounter both the
"ACCUTUNE" automotive testing equipment and
the automotive service centers offered under
applicant's mark would likely believe that
Richard Petty endorsed or was in some way
associated with both the goods and the
Ser. No. 78466753
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services, in that both marks contain the
designation "ACCUTUNE."

Although the Examining Attorney, in this case, insists
in his brief that "the identical 'SALUTE' portion dominates each
mark," we need not decide whether the registrant's "SALUTE OLEG
CASSINI" mark is dominated by such term or by the house mark
and/or fashion designer name "OLEG CASSINI."5 Rather, at a
minimum, it is plain that the term "SALUTE," as the first portion
of the registrant's mark, constitutes a prominent and significant
element thereof and that the meaning of such term is not altered
by the presence of the house mark and/or fashion designer name
"OLEG CASSINI." See, e.g., Presto Products, Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) ["[i]t is often
the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered"]. We therefore
concur with the Examining Attorney that, "[i]nsofar as meaning is
concerned, the word 'SALUTE' would convey the same meaning" in
registrant's mark as it does in applicant's "SALUTE" mark.
Specifically, while the evidence made of record by
applicant plainly demonstrates that "OLEG CASSINI" is the name of
a renowned fashion designer and that registrant has registered

5 Nonetheless, as properly pointed out by the Examining Attorney:

Because the registered mark is in a typed drawing format,
the registrant is free to use any possible different
stylizations, fonts and arrangements in the presentation of
its mark. Hence the registrant may use its mark where the
wording "OLEG CASSINI" is merely one-tenth the size of the
wording "SALUTE."

See, e.g., Phillips Petroleum Co. v. C. J. Webb, Inc. 442 F.2d 1376,
170 USPQ 35, 36 (CCPA 1971) [a mark in typed or standard character
form is not limited to the depiction thereof in any special form].
Ser. No. 78466753
8
such name as a mark or as part of a mark for various goods,
including Reg. No. 2,701,647 for the mark "BLACK TIE OLEG
CASSINI" for toiletries and women's clothing and Reg. No.
1,371,426 for the mark "THE COMPETITOR COLLECTION BY OLEG
CASSINI" for men's and women's clothing,6 we simply do not agree
with applicant's assertion that "the connotation and commercial
impression of the Cited Mark is that the terms identified thereby
serve as a commemoration of or a note of respect to Mr. Cassini
and his contributions to the fashion industry." Rather, the word
"SALUTE" in registrant's "SALUTE OLEG CASSINI" mark would be
perceived as having the same connotation as such word has in
applicant's "SALUTE" mark, especially since the name "OLEG
CASSINI" in the registrant's mark clearly conveys the impression
of a house mark and there is nothing therein which suggests that
the mark is meant to be a brand for a line of clothing which
"salutes" or otherwise commemorates registrant's renowned fashion
designer, Mr. Cassini. Consumers, instead, would perceive
registrant's mark as identifying a line of "SALUTE" brand
products from the maker and designer of "OLEG CASSINI" fashions.
Therefore, if consumers were to encounter applicant's "SALUTE"
mark for identical or closely related items of apparel, they
would be likely to assume that such goods originate from or are
at least affiliated with, the clothing offered under the mark

6 The information made of record by applicant with respect to various
pending applications by registrant, including Ser. No. 75182998 for
the mark "ICON BY OLEG CASSINI" for perfume, cologne and eau de
toilette, evidence only that such applications have been filed.

Ser. No. 78466753
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"SALUTE OLEG CASSINI." See, e.g., In re Christian Dior, S.A.,
225 USPQ 533, 535 (TTAB 1985) ["purchasers familiar with
registrant's 'CACHET' [clothing and toiletry] products would,
upon encountering [applicant's] 'LE CACHET DE DIOR' shirts,
assume that DIOR is the source of the CACHET products" and thus
"the addition of a house mark to one of two confusingly similar
marks does not avoid likelihood of confusion between them"].
With respect to applicant's further and related
argument that the term "SALUTE" is weak, and hence entitled only
to a narrow scope of protection, because that term "is commonly
used in connection with clothing and wearing accessories to
suggest a 'tribute' or homage," suffice it to say that the
evidence submitted by applicant is insufficient to establish such
generalized usage.7 As the Examining Attorney accurately
observes in his brief (footnote omitted):

7 It is well settled that the third-party registrations do not
demonstrate use of the marks which are the subjects thereof in the
marketplace or that the consuming public is familiar with the use of
those marks and has learned to distinguish between them. See, e.g.,
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462,
463 (CCPA 1973); and AMF Inc. v. American Leisure Products, Inc., 474
F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). While applicant, therefore,
has not furnished any evidence of actual third-party use of marks
containing the term "SALUTE," it is nonetheless the case that third-
party registrations may in general be given some weight to show the
meaning of a mark in the same way that dictionary definitions would be
so used. See, e.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d
915, 189 USPQ 693, 694-95 (CCPA 1976). However, as the Examining
Attorney correctly points out, applicant's reliance on Reg. No.
2,243,882 for the mark "SALUTE THAT!" for, inter alia, "clothing,
namely, sweatshirts, t-shirts and hats" and "a promotional campaign
used to gather fan support for a local football team," was cancelled
on February 11, 2006" while Ser. No. 78383378 for the mark "SALUTE
AMERICA'S HEROES" for, inter alia, "clothing, namely, t-shirts,
shirts, sweatshirts and hat" and "promoting public awareness of the
need for Americans to support members of the armed services and their
families," has not yet matured into a registration. Thus, the sole
subsisting third-party registration upon which applicant may rely is
Reg. No. 2,699,394 for the mark "A SALUTE TO AFRICAN AMERICAN
Ser. No. 78466753
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[T]he applicant has provided only one
currently live registration printed from the
Patent and Trademark Office records which
contain[s] the term "SALUTE" for the same or
similar items of clothing. As such the
applicant's claim that there is a
"significant recurrence of registered ...
SALUTE variant marks that exist on the
Principal Register" is not established.

Moreover, even if applicant had shown that the term "SALUTE" was
weak and that consequently "no one owner should be allowed to
appropriate SALUTE for exclusive use in connection with
clothing,"8 the Examining Attorney correctly points out that it
is still the case that "such marks are ... entitled to protection
against registration by a subsequent user of the same or similar
mark for the same or closely related goods." See, e.g., In re
Farah Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277, 278
(CCPA 1971); and Hollister Inc. v. Ident A Pet, Inc., 193 USPQ
439, 442 (TTAB 1976).
Finally, as the Examining Attorney also properly
observes, "[t]o the extent that applicant contends that the
refusal to register the mark in this application is inconsistent
with the ... registration of only one other live mark containing

DESIGNERS MAGIC JOHNSON FOUNDATION" and design for "clothing, namely,
t-shirts," "charitable fundraising" and "entertainment in the nature
of fashion shows; [and] award shows to demonstrate excellence in the
fields of fashion design and philanthropy."

8 Although applicant, in its reply brief, cites for the first time to
Knight Textile Corp. v. Jones Investment Co., 75 USPQ 1313 (TTAB
2005), in which the Board found no likelihood of confusion between the
mark "NORTON MCNAUGHTON ESSENTIALS" for items of "ladies sportswear"
and the mark "ESSENTIALS" for articles of "women's clothing," inasmuch
as the record established that the term "ESSENTIALS" was weak in that
it was highly suggestive of the respective goods as shown by 23 third-
party registrations (owned by 21 different registrants) for women's
apparel of marks which included the term "ESSENTIALS." Id. at 1314-
Ser. No. 78466753
11
the term SALUTE, each case must be decided on its own unique set
of facts." See, e.g., AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Thus, as our
principal reviewing court noted in In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), "[e]ven if some
prior registrations had some characteristics similar to
[applicant's] application, the ... allowance of such prior
registrations does not bind the Board or this court." See also,
In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514
(TTAB 2001); and In re Pennzoil Products Co., 20 USQP2d 1753,
1758 (TTAB 1991).
We accordingly conclude that consumers who are familiar
or acquainted with registrant's "SALUTE OLEG CASSINI" mark for
"wearing apparel, namely, shirts, pants, sweaters, jackets,
shorts, warm-up suits and jeans," would be likely to believe,
upon encountering applicant's substantially similar "SALUTE" mark
for "clothing, namely, shirts, pants, shorts, skirts, dresses,
sweaters, vests, cardigans, jackets, coats, gloves, scarves,
underpants, bath robes, hats, caps, [and] shoes," that such
identical in part and otherwise commercially related articles of
apparel emanate from, or are sponsored by or associated with, the
same source. In particular, even though customers may indeed
know of or otherwise be familiar with the fashion designer Oleg
Cassini, they would still be likely to believe that, when used in
connection with applicant's goods, applicant's "SALUTE" mark

17. Here, as indicated above, applicant has failed to establish that
the term "SALUTE" is weak in the field of clothing.
Ser. No. 78466753
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constitutes a separate or expanded line of clothing from the same
fashion house and designer as registrant's "SALUTE OLEG CASSINI"
line of apparel.
Decision: The refusal under Section 2(d) is affirmed.