SL&E Training Stable, Inc.

Trademark Trial and Appeal Board

Sep 4, 2008

No. 78806669 (T.T.A.B. Sep. 4, 2008)

Mailed:
September 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SL&E Training Stable, Inc.
________

Serial No. 78806669
_______

Anthony F. Lo Cicero of Amster, Rothstein & Ebenstein LLP
for SL&E Training Stable, Inc.

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

Before Cataldo, Bergsman and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Edelman Shoe Company, LLC, filed an intent-to-use
application for the mark SAM EDELMAN, in standard character
format, for “luggage, handbags, purses, wallets, all-
purpose tote bags, all-purpose sports bags, backpacks,” in
Class 18.1 The mark SAM EDELMAN identifies an individual
named Sam Edelman whose consent to register has been made
of record. In addition, SL&E Training Stable, Inc.

1 Edelman Shoe Company, LLC assigned the mark and the application
to SL&E Training Stable, Inc. on August 7, 2006. The assignment
was recorded on August 11, 2006, at reel 3367, frame 0586.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial No. 78806669
2
(“applicant”) is the owner of Registration No. 3271895 for
the mark SAM EDELMAN for “footwear, namely, boots, shoes,
slippers and sandals,” in Class 25.
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark is likely to
cause confusion with the mark EDELMAN for “articles made
from leather and imitations of leather, and not included in
other classes, namely - - wallets, handbags, traveling
bags, luggage trunks, umbrellas, harnesses and saddlery;
animal skins and hides; tanned leather adapted for use in
upholstering furniture, namely – - seating for use in
airplanes, cars, and other vehicles,” in Class 18.2
Applicant argues that there is no likelihood of
confusion because there is a “strong public policy to allow
individuals to use their names.”3 Moreover, applicant
asserts that this public policy is especially applicable in
this case where applicant has built a reputation in the
relevant industry.4 Contrary to applicant’s argument,
however, neither our reviewing court, the Court of Appeals
for the Federal Circuit, nor its predecessor, the Court of

2 Registration No. 3000104, issued September 27, 2005.
3 Applicant’s Brief, p. 3.
4 Id.
Serial No. 78806669
3
Customs and Patent Appeals, have adopted such a “strong
public policy.”5 See Nina Ricci S.A.R.L. V. E.T.F.
Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir.
1989) (VITTORIO RICCI for handbags, clothing and retail
store services in the field of clothing is likely to cause
confusion with NINA RICCI for clothing and accessories even
though Vittorio Ricci was the name of defendant’s
principal); Ford Motor Co. v. Ford, 462 F.2d 1405, 174 USPQ
456, 458 (CCPA 1972) (“the interest in allowing an
entrepreneur to use his own surname as a trademark on his

5 In this regard, we note that applicant has not cited any cases
from the Court of Appeals for the Federal Circuit or Court of
Customs and Patent Appeals. Also, we note that the cases relied
on by applicant relate to a defendant’s right to use a personal
name and not the right to register a personal name as a
trademark. Finally, the cases cited in applicant’s brief do not,
in fact, support its assertion that they show “a strong public
policy to allow individuals to use their [an individual’s] names”
because they do not stand for a party’s unfettered right to use a
name as a trademark. Ptak Bros. Jewelry Inc. v. Ptak, 83 USPQ2d
1519, 1524 (S.D.N.Y. 2007) (a proper name merits protection if it
has acquired distinctiveness; the evidence showed it was common
to have numerous family-owned jewelry businesses with the same
surname); Johnny’s Fine Foods Inc. v. Johnny’s Inc., 286
F.Supp.2d 876, 68 USPQ2d 1505, 1513 (M.D. Tenn. 2003) (the right
to use one’s personal name will be enjoined to the extent
necessary to prevent confusion); Henegan Construction Co. v.
Heneghan Contracting Corp., 63 USPQ2d 1984, 1988 (S.D.N.Y. 2002)
(a personal name or surname is entitled to protection if it has
acquired distinctiveness; defendant enjoined from using the
surname “Heneghan,” or anything similar, as a trade name or
service mark); M. Fabrikant & Sons, Ltd. v. Fabrikant Fine
Diamonds, Inc., 17 F.Supp.2d 249, 252 (S.D.N.Y. 1998) (where
senior user establishes that personal name is a strong mark, it
is entitled to trademark protection; evidence showed other
members of the Fabrikant family have used their family name in
the jewelry business, and therefore plaintiff sought only to have
defendant use the Fabrikant surname with a personal name).
Serial No. 78806669
4
goods must give way to the more compelling public and
private interests involved in avoiding a likelihood of
confusion or mistake as to source where use of the surname
leads to such confusion or mistake”). See also Justin
Industries, Inc. v. D.B. Rosenblatt, Inc., 213 USPQ 968,
976 (TTAB 1981) (“the right to use one’s name in his
business may be circumscribed if it conflicts with a mark
previously used by another and is likely to cause confusion
as to the origin of the business or of the goods sold
thereunder”); Jack Winter Inc. v. Lancer of California,
Inc., 183 USPQ 445, 446 (TTAB 1974) (DAVID WINTER for
clothing is likely to cause confusion with JACK WINTER for
clothing); Girard-Perregaux & Cie, S.A. v. Perregaux, 122
USPQ 95, 96 (Comm’r. Pats. 1959) (“Paul Perregaux” is
likely to be confused with “Girard Perregaux” and
“Perregaux”). Thus, the fact that SAM EDELMAN is an
individual’s name does not give applicant an unfettered
right to use that name if it conflicts with a previously
registered mark.
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
Serial No. 78806669
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USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (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, 29 (CCPA 1976) (“The 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”).
A. The similarity or dissimilarity and nature of the
goods.

In an ex parte appeal, likelihood of confusion is
determined on the basis of the goods as they are identified
in the application and the cited registration. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re William Hodges
& Co., Inc., 190 USPQ 47, 48 (TTAB 1976). See also Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the
Serial No. 78806669
6
particular channels of trade or the class of purchasers to
which the sales of goods are directed”).
In this case, the goods identified by applicant and
the registrant are identical in part. Both descriptions of
goods include wallets and handbags. In addition, applicant
has listed luggage while the registration includes luggage
trunks. Because luggage encompasses luggage trunks, these
products are, in effect, identical. Finally, the applicant
and the registrant have also identified closely related
goods: applicant has listed all-purpose tote bags and
sport bags and the registration includes traveling bags.
Traveling bags and both all-purpose tote bags and sport
bags can be used for similar purposes and are therefore, to
some extent, competitive products.
Because there are no restrictions in applicant’s
description of goods, applicant’s wallets and handbags
encompass registrant’s wallets and handbags made of leather
and imitations of leather. In addition, applicant’s
luggage encompasses registrant’s luggage trunks. See
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983) (“There is no specific limitation and
nothing in the inherent nature of Squirtco’s mark or goods
that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The Board, thus, improperly read
Serial No. 78806669
7
limitations into the registration”); In re Linkvest S.A.,
24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ
211 USPQ 639, 640 (TTAB 1981).
B. The similarity or dissimilarity of likely-to-continue
trade channels.

Because there are no limitations as to channels of
trade or classes of purchasers in either the application or
the registration, it is presumed that the registration and
the application encompass all of the goods of the type
described in the description of goods, that the goods so
identified move in all channels of trade normal for those
goods, and that the products are available to all classes
of purchasers for the listed products. See In re Linkvest
S.A., 24 USPQ2d at 1716.
In addition, because the goods in the application and
the cited registration are identical in part, we must also
presume that the channels of trade and classes of
purchasers are the same. See 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”); In re Smith and
Serial No. 78806669
8
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”). In view of the foregoing, we
must presume that at least the goods identified in the
application and the registration that are legally identical
move in the same channels of trade and will be sold to the
same classes of consumers. Also, to the extent that
traveling bags and all-purpose tote bags and sport bags are
competitive products, they may also be sold in the same
channels of trade and to the same classes of consumers.
C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., supra. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). In comparing the marks, we are mindful that
where, as here, the goods are identical in part or
otherwise closely related, the degree of similarity
Serial No. 78806669
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necessary to find likelihood of confusion need not be as
great as where there is a recognizable disparity between
the goods. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992); Real Estate One, Inc. v. Real Estate 100 Enterprises
Corporation, 212 USPQ 957, 959 (TTAB 1981); ECI Division of
E-Systems, Inc. v. Environmental Communications
Incorporated, 207 USPQ 443, 449 (TTAB 1980).
In addition, 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 so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average
customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975). In this case, the relevant public would be
Serial No. 78806669
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the general public who buy wallets, handbags, luggage, and
tote or sport bags.
Applicant’s mark SAM EDELMAN incorporates the entire
registered mark EDELMAN. The first name “Sam” in
applicant’s mark modifies the surname “Edelman,” in effect,
telling which Edelman it is, and therefore emphasizes the
“Edelman” portion. Because the marks share the surname
“Edelman,” which is the only element in the registered mark
and is a clearly recognizable and prominent element in
applicant’s mark, we find that there are strong
similarities between the marks in terms of appearance,
sound, meaning and commercial impression.
Moreover, consumers or members of the trade viewing
the registrant’s mark EDELMAN may see it as an abbreviated
form of applicant’s mark SAM EDELMAN. Nina Ricci S.A.R.L.
v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901,
1903 (Fed. Cir. 1989) (“the Board has previously recognized
the practice in the fashion industry of referring to
surnames alone,” and therefore the RICCI surname is the
dominant and significant part of opposer’s mark); Marshall
Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333
(TTAB 1992) (“companies are frequently called by shortened
names, such as Penney’s for J.C. Penney’s, Sears for Sears
and Roebuck . . . , Ward’s for Montgomery Ward’s, and
Serial No. 78806669
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Bloomies for Bloomingdale’s”); Big M. Inc. v. United States
Shoe Corp., 228 USPQ 614, 616 (TTAB 1985) (“[W]e cannot
ignore the propensity of consumers to often shorten
trademarks and, in the present case, this would be
accomplished by dropping the ‘T.H.’ [in T.H. MANDY] in
referring to registrant’s stores”); Polo Fashions, Inc. v.
La Loren, Inc., 224 USPQ 509, 512 (TTAB 1984) (“Lauren” is
a shorthand term for Ralph Lauren); Nina Ricci S.A.R.L. v.
Haymaker Sports, Inc., 134 USPQ 26,28 (TTAB 1962) (“it is
common knowledge that various couturiers such as Christian
Dior, Huber de Givenchi, and Jacques Fath are frequently
referred to by their surnames alone”).
In view of the foregoing, we find that applicant’s
mark is similar in appearance, sound, connotation and
commercial impression to the registered mark.
D. The conditions under which and buyers to whom sales
are made (i.e., impulse vs. careful, sophisticated
purchasing).

Based on its interpretation of two third-party cases,
applicant contends, without any evidence, that consumers of
handbags are sophisticated, and therefore confusion is not
likely.6 Despite the findings in those cases, as we
indicated above, there are no restrictions or limitations

6 Applicant’s Brief, p. 6.
Serial No. 78806669
12
in the description of applicant’s goods or the goods in the
cited registration. Therefore the description of goods in
the application and registration is broad enough to
encompass inexpensive wallets, handbags, luggage and
traveling bags sold in discount stores to consumers who may
not exercise a high degree of care. Accordingly, the
conditions under which sales are made is a likelihood of
confusion factor that weighs in favor of finding that there
is a likelihood of confusion.
E. Whether applicant’s ownership of a registration for
the identical mark for footwear justifies
registration?

Applicant is the owner of Registration No. 3271895 for
the mark SAM EDELMAN for footwear, namely, boots, shoes,
slippers and sandals. Applicant contends that the footwear
identified in its registration is related to the products
identified in its application, and therefore justifies the
registration of the application at issue. Applicant asserts
that in the context of proving acquired distinctiveness, it
may rely on a prior registration for the same mark for
similar goods.7 In essence, applicant is arguing that the
Office should be estopped from refusing to register the

7 Applicant’s September 7, 2007 Request for Reconsideration, pp.
7-8; Applicant’s Brief, p. 3. Whether applicant’s mark has
acquired distinctiveness is not controlling on the issue of
likelihood of confusion. In re Bissett-Berman Corp., 476 F.2d
640, 177 USPQ 528, 529 (CCPA 1973).
Serial No. 78806669
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application at issue when it has previously registered the
identical mark for related goods.
However, “[t]his Office should not be barred from
examining the registrability of a mark when an applicant
seeks to register it for additional goods as it does here,
even when the additional goods are closely related to those
listed in a prior registration.” In re Sunmarks Inc., 32
USPQ2d at 1472. This Board has the authority and duty to
decide an appeal from a final refusal to register, and this
duty may not be delegated by adopting the conclusion
reached by another examining attorney on a different
record. In re Sunmarks Inc., 32 USPQ2d at 1472, quoting In
re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986).
Accordingly, the issuance of the prior registration is not
controlling here.
F. Whether the renown of Sam Edelman justifies
registration?

Applicant argues that its mark is already well-known
because it is the name of applicant’s principal.8 In its
Request for Reconsideration, applicant submitted seven (7)
newspaper articles referencing Sam Edelman.9 These articles

8 Applicant’s Brief, pp. 2, 3, and 5.
9 Applicant also attached the newspaper articles to its brief
under the mistaken belief that it is a convenience to the Board.
It is not. When considering a case for final disposition, the
entire record is readily available to the panel. Therefore
attaching exhibits that are already of record only adds to the
Serial No. 78806669
14
are evidence that Sam Edelman was referenced in seven
articles. However, they do not prove that Sam Edelman is
well-known in the fashion industry. Apparently, in or
around 1987, Sam and Libby Edelman created the “Caroline”
ballet flat that sold in the millions. However, it is not
apparent from these articles that consumers know that Sam
Edelman created the “Caroline” or that consumers recognize
Sam Edelman.
Finally, even if applicant had proven that Sam
Edelman had a high degree of recognition in the fashion
industry, applicant does not make clear how the renown of
Sam Edelman would diminish the likelihood of confusion with
the registered mark and, in any event, it would not change
the result.
G. Balancing the factors.
In view of the facts that the goods at issue are
identical in part, or otherwise closely related, that we
must presume the goods move in the same channels of trade
and are sold to the same consumers, and that the marks are
similar in appearance, sound, meaning and commercial

bulk of the file. Because we must determine whether attachments
to the brief were properly made of record, citation to the
attachments requires an examination of the attachment and then an
attempt to locate the same evidence in the record developed
during the prosecution of the application, requiring more time
and effort than would have been necessary if citations were
directly to the record.
Serial No. 78806669
15
impression, applicant’s mark SAM EDELMAN for “luggage,
handbags, purses, wallets, all-purpose tote bags, all-
purpose sports bags, backpacks” is likely to cause
confusion with the mark EDELMAN for “articles made from
leather and imitations of leather, and not included in
other classes, namely - - wallets, handbags, traveling
bags, luggage trunks, umbrellas, harnesses and saddlery;
animal skins and hides; tanned leather adapted for use in
upholstering furniture, namely – - seating for use in
airplanes, cars, and other vehicles.”
Decision: The refusal to register is affirmed and
registration to applicant is refused.