Seiff

Trademark Trial and Appeal Board

Jan 4, 2007

No. 78351857 (T.T.A.B. Jan. 4, 2007)

Mailed: January 4, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Seiff
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Serial No. 78351857
_______

AnnMarie Croswell of Perkins & Dunnegan for Nicole Kule
Seiff.

Naakwama Ankrah, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Hairston, Kuhlke and Cataldo, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Nicole Kule Seiff seeks registration on the
Supplemental Register of the mark KULE (standard character
claimed) for goods identified as “men’s, women’s and
children’s clothing, namely shirts, t-shirts, tank tops,
blouses, vests, suits, jackets, pants, slacks, trousers,
dresses, skirts, shorts, bathing suits, bathing trunks,
THIS IS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78351857
2
ties, hats, sweaters, pajamas, shoes, sneakers, athletic
shoes, scarves, gloves” in International Class 25.1
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified goods, so
resembles the registered mark for “men’s and women’s
footwear; clothing, namely, t-shirts, jeans, gym shorts,
coats, hats, headbands, earbands, sweatbands, baseball-
style caps, neck warmers, mittens, scarves, gloves,
jackets, pullovers, shells, vests, sweaters, shirts,
turtlenecks, clothing tops, sweatshirts, sweatpants, pants,
undergarments, undershirts, undershorts, Bermuda shorts,
socks, belts, balaclavas” in International Class 25, as to
be likely to cause confusion, mistake or deception.2
When the refusal was made final, applicant appealed
and briefs have been filed. We affirm the refusal to
register.
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

1 Application Serial No. 78351857, filed January 14, 2004,
alleging first use on August 1, 2001 and use in commerce on
January 1, 2002 under Section 1(a) of the Trademark Act. 15
U.S.C. §1051(a).
Serial No. 78351857
3
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,
two key considerations are the similarities between the
marks and the similarities between the goods. 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).
We turn first to a consideration of the goods
identified in the application and the cited registration.
It is well settled that goods and services need not be
similar or competitive in nature to support a finding of
likelihood of confusion. The question is not whether
purchasers can differentiate the goods and services
themselves, but rather whether purchasers are likely to
confuse the source of the goods and services. See Helene
Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618
(TTAB 1989). Further, we must consider the cited
registrant’s goods as they are described in the
registration and we cannot read limitations into those
goods. See Hewlett-Packard Co. v. Packard Press Inc., 281

2 Registration No. 22765230, issued September 16, 2003.
Serial No. 78351857
4
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987). If the cited
registration describes goods broadly, and there is no
limitation as to the nature, type, channels of trade or
class of purchasers, it is presumed that the registration
encompasses all goods of the type described, that they move
in all channels of trade normal for these goods, and that
they are available to all classes of purchasers for the
described goods. See In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992).
The identified goods of applicant and those of the
cited registrant include identical items (e.g., shirts, t-
shirts, pants, vests, shoes/footwear, hats), and include
otherwise related clothing items (e.g., blouses,
undershirts and tank tops). Applicant’s argument that the
goods are not related because applicant’s goods include
children’s clothing and “eight distinct terms that are not
included in Registrant’s identification” is not persuasive.
It is sufficient that registrant’s identification of goods
encompasses some of applicant’s goods, the fact that
applicant’s identification in International Class 25
includes other goods does not obviate the relatedness of
the identical goods. See, e.g., Tuxedo Monopoly, Inc. v.
Serial No. 78351857
5
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA
1981). Moreover, many of applicant’s “eight distinct”
goods are related to registrant’s goods, for example, tank
tops and undershirts. We do not read registrant’s clothing
items to be limited to only men’s and women’s clothing in
view of the semi-colon separating the footwear and
clothing, i.e., “men’s and women’s” only modifies footwear.
However, even with a restrictive reading of registrant’s
identification it encompasses applicant’s clothing for men
and women. Further, as to applicant’s argument that
“registrant only sells shoes for men, women and children”
based on a review of registrant’s website, applicant may
not restrict the scope of registrant’s identification of
goods by extrinsic evidence.3 See In re Bercut-Vandervoort
& Co., 229 USPQ 763, 764 (TTAB 1986). Finally, applicant’s
argument that registrant “no longer sell[s] any goods or
services” under its mark is an impermissible collateral
attack on the registration and is improper in the absence
of a petition to cancel the registration. Therefore, this
argument has been given no further consideration. Section
7(b) of the Trademark Act provides that a certificate of
registration on the Principal Register shall be prima facie

3 The examining attorney has objected to applicant’s evidence
that was submitted for the first time with applicant’s brief.
Serial No. 78351857
6
evidence of the validity of the registration, of the
registrant’s ownership of the mark and of the registrant’s
exclusive right to use the mark in connection with the
goods or services identified in the certificate. During ex
parte prosecution, including an ex parte appeal, an
applicant will not be heard on matters that constitute a
collateral attack on the cited registration. In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997); and In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5
(TTAB 1992).
Considering the channels of trade, with regard, at
least, to the identical goods, inasmuch as there are no
limitations in either the registration or the subject
application, we must presume that applicant’s and
registrant’s goods will be sold in the same channels of
trade and will be bought by the same classes of purchasers.
See Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994). Applicant’s
arguments regarding its actual channels of trade and
attempts to limit registrant’s channels of trade fail for
the same reasons stated above with regard to the

Inasmuch as this evidence is untimely it will not be considered.
Trademark Rule 2.142(d).
Serial No. 78351857
7
relatedness of the goods. See Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1987). Further, the goods in the
application and registration are general clothing items and
would share the same customer base, including applicant’s
children’s clothing inasmuch as men and women frequently
purchase clothing for their children.
In view of the above, the du Pont factors of the
similarity of the goods, the channels of trade and class of
purchasers favor a finding of likelihood of confusion as to
the mark in the cited registration.
We turn now to the first du Pont factor, i.e., whether
applicant’s mark KULE and registrant’s mark are similar
or dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
The analysis is not whether the marks can be distinguished
when compared side-by-side. Rather, we must determine
whether the marks are sufficiently similar that there is a
likelihood of confusion as to source and, in making this
determination, we must consider the recollection of the
average purchaser who normally retains a general, rather
than specific, impression of trademarks. Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Serial No. 78351857
8
We find that applicant’s mark KULE is similar in sound
and appearance to registrant’s mark . Applicant argues
that the marks are not pronounced the same in that
registrant’s mark is pronounced “COOL” and applicant’s mark
is pronounced as “kYOUL” or “Qu-OOL.” Applicant has
provided no evidence to support her contention that KULE
would be pronounced “kYOUL” by potential purchasers and it
is just as likely that it would be pronounced in the same
way as similarly spelled words which rhyme with COOL, for
example, RULE. Moreover, there is no proper pronunciation
of a trademark because it is impossible to predict how the
public will pronounce a particular mark and correct
pronunciation cannot be relied on to avoid a likelihood of
confusion. See Kabushiki Kaisha Hattori Tokeiten v.
Scuotto, 228 USPQ 461 (TTAB 1985).
Applicant also argues that the marks are not similar
in appearance. However, the only differences between the
marks are the E on the end of applicant’s mark and the
“diacritical mark” on registrant’s mark. We do not find
these differences sufficient to distinguish the marks. As
to connotation, while applicant’s mark may be a surname,
when pronounced the marks can have the same connotation in
that they both sound like the word “COOL.” Overall, we
find that the marks have a very similar commercial
Serial No. 78351857
9
impression and that the factor of the similarity of the
marks weighs in favor of likelihood of confusion.
Applicant’s arguments regarding the other du Pont
factors do not lead us to a different conclusion. First,
with regard to the sophistication of the purchasers and the
level of impulse with which these purchases are made, while
applicant argues that its goods are “high end” children’s
clothing and “expensive,” the identification of goods is
not so limited. Moreover, even if applicant’s goods are
expensive and a potential purchaser may exhibit more care
when purchasing applicant’s goods than they would
purchasing chewing gum, we are not persuaded that the
purchasers of children’s clothing are sophisticated to the
level of distinguishing between highly similar marks that
sound identical when used on identical goods. See In re
Decombe, 9 USPQ2d 1812 (TTAB 1988). Further, while
applicant argues that its professional buyers for retail
stores “pay closer attention to the manufacturer of the
product than the average consumer,” we must also consider
the average consumer. As to the factor of fame,
registrant’s mark need not be famous in order to receive
protection under Section 7(b). Applicant’s reference to a
the prosecution history of a third-party application has no
Serial No. 78351857
10
relevance to this proceeding.4 In re Sunmarks Inc., 32
USPQ2d 1470 (TTAB 1994); In re National Hockey League,
Inc., 222 USPQ 638, 641 (TTAB 1984). Applicant’s arguments
regarding its right to exclude others and potential
confusion fail inasmuch as these arguments constitute a
collateral attack on the registration.
Finally, applicant argues that there is no evidence of
any actual confusion and that there has been concurrent use
for five years. We do not accord significant weight to
applicant's contention, unsupported by any evidence, that
there have been no instances of actual confusion despite
contemporaneous use of the respective marks. The Federal
Circuit has addressed the question of the weight to be
given to an assertion of no actual confusion by an
applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we
agree with the Board that Majestic's
uncorroborated statements of no known instances
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant's
corporate president's unawareness of instances of
actual confusion was not conclusive that actual
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if
not conclusive, of a high likelihood of

4 The electronic printout of the third-party application
submitted with the brief, is untimely and has been given no
consideration. Trademark Rule 2.142(d).
Serial No. 78351857
11
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, [citation omitted], especially in
an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205.

Accordingly, while examples of actual confusion may
point toward a finding of a likelihood of confusion, an
absence of such evidence is not as compelling in support of
a finding of no likelihood of confusion. Thus, we cannot
conclude from the lack of instances of actual confusion
that confusion is not likely to occur.
In conclusion, we find that because the marks are
similar, the goods are identical and otherwise related, and
the channels of trade and purchasers overlap, confusion is
likely between applicant’s mark and the mark in the cited
registration.
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.