Spy Optic, Inc.

Trademark Trial and Appeal Board

Sep 16, 2003

No. 75566756 (T.T.A.B. Sep. 16, 2003)

Mailed:
September 16, 2003
Paper No. 16
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Spy Optic, Inc.
________
Serial No. 75/566,756
_______
Kit M. Stetina of Stetina Brunda Garred & Brucker for Spy
Optic, Inc.
Henry S. Zak, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Cissel, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Spy Optic, Inc., seeks registration on the Principal
Register for the mark SPY for “wearing apparel, namely,
shirts, T-shirts, shorts, pants, sweatshirts, sweatpants,
hats, visors, shoes and belts,” in International Class 251.
The Trademark Examining Attorney issued a final refusal
to register based upon Section 2(d) of the Trademark Act, 15
1 Application Serial Number 75/566,756 was filed on October 8,
1998, based upon applicant’s allegation of a bona fide intention to
use the mark in commerce. While this application also contained a
listing of jewelry items in International Class 14 at the time of
filing, this class of goods was dropped during the course of
prosecution in light of another cited registration.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/566,756
- 2 -
U.S.C. §1052(d), on the ground that applicant’s SPY mark, if
used on its goods, so resembles the mark, FASHION SPY!, which
is registered for “clothing, namely tops, skirts, shorts,
skorts, pants, shirts, dresses, jumpers, jackets,” as to be
likely to cause confusion, or to cause mistake, or to deceive.2
Applicant has appealed the final refusal to register.
Briefs have been filed, but applicant did not request an oral
hearing. We affirm the refusal to register.
Applicant argues that the two marks are different as to
sight, sound and connotation, and that these collective
dissimilarities weigh against a finding of likelihood of
confusion. Applicant also argues that its items of wearing
apparel are different from those listed by registrant, as its
goods are associated with extreme sporting events. As such,
applicant contends that they move in different channels of
trade. Furthermore, applicant argues that the allowance of
registrant’s FASHION SPY! mark for clothing over applicant’s
SPY mark for sunglasses shows that the United States Patent
and Trademark Office has already made the determination that
there is no likelihood of confusion between the word portions
of the marks at issue herein.
By contrast, the Trademark Examining Attorney argues that
confusion is likely when these respective marks, both having
2 Registration No. 1,981,264 issued on the Principal Register on
Serial No. 75/566,756
- 3 -
the arbitrary term SPY as their predominant element, are
applied to the identified goods, which are in part identical.
In the course of rendering this decision, we have
followed the guidance of In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). This case sets forth
the factors, which if relevant evidence is of record, must be
considered in determining likelihood of confusion. In any
likelihood of confusion analysis, two key factors are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to an examination of the goods. As noted
by the Trademark Examining Attorney, some of the clothing
items identified in the application and registration are
identical (e.g., shirts, shorts and pants). Applicant argues
without proof that its goods are associated with “extreme
sporting events such as surfing, dirt bike riding, snow
boarding, motor-cross (sic), free-skiing, skating and the
like.” (Applicant’s appeal brief, p. 14). Even if this were
demonstrated to be the case, there is no such limitation in
the identification of goods in the application. Hence, we
must consider some of these listed goods to be legally
identical. See In re Dixie Restaurants, 105 F.3d 1405, 41
June 18, 1996; Section 8 affidavit has been accepted.
Serial No. 75/566,756
- 4 -
USPQ2d 1531, 1534 (Fed. Cir. 1997) [“Indeed, the second
du Pont factor expressly mandates consideration of the
similarity or dissimilarity of the services as described in an
application or registration”]. In addition, we find the other
goods to be closely related. Moreover, based upon the
identifications in the application and the cited registration,
we must also presume that the goods of registrant and of
applicant will move in the same channels of trade to the same
classes of ordinary consumers. Id.
Turning then to the marks, as our principal reviewing
court, the Court of Appeals for the Federal Circuit, has
pointed out, “[w]hen marks would appear on virtually identical
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines.” Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
As applied to clothing, the word “fashion” must be deemed
to be at least highly suggestive. On the other hand, the word
“spy” is an arbitrary designation for these items. Hence, in
spite of the extra word in registrant’s mark, the single
strongest source indicator therein is the word SPY.
As to connotation, applicant argues as follows:
… Appellant’s word mark “SPY” evokes the
concept of evasiveness, cleverness, or a
variety of other similar qualities. This is
consistent with the dictionary meaning of the
Serial No. 75/566,756
- 5 -
term “spy” which relates to a person who acts
secretly to obtain information….
In contrast with Appellant’s mark, the
word portion of Registrant’s mark does not
connote the concept of evasiveness, cleverness,
or a variety of other similar qualities.
Rather, Registrant’s mark “FASHION SPY!” has a
different connotation than that of Appellant’s.
More specifically, the term “FASHION” is highly
effective in separating Registrant’s mark from
Appellant’s mark as to the issue of
connotation. Such lengthy term is present in
Registrant’s mark to provide a different
connotation than that of Appellant’s as it
turns Registrant’s mark to the concept of being
fashion conscious or being more fashionable
than others.
(Applicant’s reply brief, pp. 3 – 4).
In spite of applicant’s arguments to the contrary, we
find a strong similarity in connotation inasmuch as both marks
create imagery tied to the generally understood, dictionary
meaning of the word “spy.” Both FASHION SPY and SPY, as
applied to items of clothing, connote clandestine activities,
such as watching someone (or something) in secret.
Even as to sound and appearance, these two marks have
strong similarities because they are both dominated by the
word “SPY.” It is a well-established principle 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 the ultimate
conclusion rests on consideration of the marks in their
Serial No. 75/566,756
- 6 -
entireties.” In re National Data Corp., 732 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). A determination of likelihood
of confusion is not made on a purely mechanical basis,
counting the number of words, or even letters, that are the
same or different. The proper test for determining the issue
of likelihood of confusion is the similarity of the general
commercial impression engendered by the marks – not specific
differences one can identify when the marks are subjected to a
side-by-side comparison. See Johann Maria Farina Gegenuber
Dem Julichs-Platz v. Chesebrough-Pond, Inc., 470 F.2d 1385,
176 USPQ 199, 200 (CCPA 1972). Also, we must keep in mind the
fallibility of human memory and the fact that the average
consumer retains a general, rather than a specific, impression
of trademarks encountered in the marketplace. In this
context, we find that the word “fashion” at the beginning of
registrant’s mark and the exclamation point at its ending are
insufficient to distinguish the two marks when they are
applied to identical and closely related items of clothing.
Hence, we find that the two marks are quite similar as to
connotation, sound and appearance, and that the differences
identified by applicant are not sufficient to distinguish the
two marks as to overall commercial impressions.
Serial No. 75/566,756
- 7 -
Furthermore, we note that the record is devoid of any
evidence of third-party uses of other “SPY” marks for goods
similar to the type of goods involved in this case.
As to applicant’s argument that the United States Patent
and Trademark Office has already made the determination that
there is no likelihood of confusion between the word portions
of the marks at issue herein, we disagree with this
conclusion. Given the cumulative differences in the
respective goods (sunglasses versus clothing), when combined
with the various differences applicant points out in the
respective marks, it would have been difficult to support a
finding that likelihood of confusion exists with registrant’s
FASHION SPY! mark for clothing based solely upon applicant’s
SPY mark for sunglasses. Despite applicant’s SPY mark for
sunglasses, applicant does not have an unfettered right to
expand use of its mark to these additional goods, and the
intervening registration of registrant’s mark must be
considered in evaluating applicant’s current application. In
re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).
Decision: The refusal to register is affirmed.