Sun Up Int’l. Corp.

Trademark Trial and Appeal Board

Oct 11, 2000

No. 75478836 (T.T.A.B. Oct. 11, 2000)

Paper No. 9
ejs
10/11/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sun Up International Corp.
________
Serial No. 75/478,836
_______
Thomas I. Rozsa of Rozsa & Chen LLP for Sun Up
International Corp.
Henry S. Zak, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Cissel, Seeherman and Bottorff, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Sun Up International Corp. has applied to register
CRYSTAL and design, as shown below, for women's and
children's shoes.1

1 Application Serial No. 75/478,836, filed May 4, 1998,
asserting first use and first use in commerce as early as
June 15, 1983.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/478,836
2
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant's mark so resembles the following marks, three of
which were originally registered by David Crystal, Inc. and
are now owned by Crystal Brands, Inc., and the fourth of
which is registered to The Krystal Company, as to be likely
to cause confusion or mistake or to deceive.2 The Crystal
Brands marks are:
CRYSTAL for ladies' and misses' dresses, coats, suits,
blouses, skirts, and sweaters;3
CRYSTAL KNITS, with the word "knits" disclaimed, for
dresses, and suits;4
with the word "cotton"
disclaimed, for ladies' and
misses' dresses and dress
ensembles, consisting of a
dress and a coat, suits,
coats, slacks, playsuits,
blouses, work suits.5

2 Registration No. 1,086,494 for CRYSTAL COLLECTIONS, and also
registered by David Crystal, Inc., was originally cited against
applicant's applications. However, in his appeal brief the
Examining Attorney stated that this registration has expired, and
therefore it no longer forms a basis for refusal of registration.
3 Registration No. 841,287, issued December 26, 1967; Section 8
affidavit accepted; Section 15 affidavit received; renewed in
1987 for a 20-year period.
4 Registration No. 764,347, issued February 4, 1964; Section 8
affidavit accepted; Section 15 affidavit received; renewed in
1984 for a 20-year period.
5 Registration No. 404,730, issued December 21, 1943; Section 8
affidavit accepted; Section 15 affidavit received; second renewal
in 1983 for a 20-year period.
Ser. No. 75/478,836
3
The cited registration owned by The Krystal Company is for
KRYSTAL for "clothing, namely, T-shirts, golf shirts, polo
shirts, hats, visors, shorts, sweaters, sweatshirts,
sweatpants, jackets, wind breakers, and aprons."6
Applicant has appealed from the refusals. The appeal
has been fully briefed, but an oral hearing was not
requested.
We affirm the refusals with respect to all of the
cited marks.
Our determination 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 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations 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 the refusals based on the Crystal
Brands registrations for CRYSTAL, CRYSTAL KNITS and A
CRYSTAL COTTON. In comparing marks, it is well established
that 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

6 Registration No. 2,033,261, issued January 28, 1997.
Ser. No. 75/478,836
4
conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). In this case, we find CRYSTAL
to be the dominant element of applicant's CRYSTAL and
design mark. As the only portion of the mark which can be
articulated, and therefore the portion by which purchasers
would refer to the goods, it is likely to make a greater
impression on purchasers that the ornamental flower design,
and would be the portion that would be remembered and
relied upon to identify the goods. See In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). CRYSTAL is also
the dominant portion of the registrant's marks CRYSTAL
KNITS and A CRYSTAL COTTON. The disclaimed words KNITS and
COTTON are merely descriptive of the material from which
the clothing is made, and thus consumers would regard the
word CRYSTAL as the source-identifying element in each
mark.
Comparing the marks in their entireties, and giving
appropriate weight to the dominant elements of each, we
find that applicant's mark and the registered marks are
similar in appearance, pronunciation and meaning. In
particular, applicant's mark is identical in pronunciation
and connotation to the registered mark CRYSTAL, and is very
similar in appearance, the only difference being the
Ser. No. 75/478,836
5
inclusion of the flower design in applicant's mark, a
design which, for the reasons given above, has been given
less weight in our analysis. Applicant's mark is also
similar to the other two cited CRYSTAL registrations, for
CRYSTAL KNITS and A CRYSTAL COTTON. The source-identifying
portions of these marks--the word CRYSTAL--are the same as
the dominant element CRYSTAL in applicant's mark, and the
slight differences in appearance, pronunciation and
connotation of the marks occasioned by the additional
elements in applicant's mark and the registered marks are
not sufficient to distinguish them. The commercial
impression of all the marks is the same, and consumers will
perceive the slight variations, e.g., the word KNITS and
the word COTTON, as merely referring to the material of
which the clothing items are made, rather than to an
indication of a source separate from that of applicant's
CRYSTAL and flower design mark.
With respect to the goods, the cited marks are
registered for various clothing items, all of which include
ladies' and misses' dresses and suits. As applicant points
out, these goods are specifically different from the
women's and children's shoes which are identified in its
application. However, there is no requirement that the
goods of the parties be similar or competitive, or even
Ser. No. 75/478,836
6
that they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that
the respective goods of the parties are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1986).
In this case, applicant's identified women's shoes7
would be purchased by the same class of consumers who
purchase registrant's identified ladies' and misses'
dresses and suits. Moreover, both applicant's and
registrant's goods must be considered complementary
products, since women generally try to match their shoes to
their dresses or suits to create an overall outfit or look.
As a result, consumers might well purchase both applicant's
and the registrant's products during a single shopping
trip, with the express purpose of having shoes and a dress
or suit that go together. See B. Rich's Sons, Inc. v.

7 In its brief applicant states that its shoes are primarily for
children. However, its identification of goods includes women's
shoes, and we must determine the issue of likelihood of confusion
based on the goods as they are identified in the application.
Ser. No. 75/478,836
7
Frieda Originals, Inc., 176 USPQ 284, 285 (TTAB
1972)["shoes and women's wearing apparel are closely
related goods which could be purchased in the same retail
outlets by the same classes of purchasers and often during
the same shopping excursion to complete an ensemble"]. See
also, In re Melville Corp., 18 USPQ2d 1387 (TTAB 1991).
In addition, the Examining Attorney has made of record
a number of third-party registrations which show that
various entities have registered their marks both for goods
of the type listed in applicant's application and for goods
of the type recited in registrant's registrations. Third-
party registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
For the foregoing reasons, we find that applicant's
identified women's shoes and the registrant's identified
women's and misses' dresses and suits are similar goods,
and would be used for a complementary purpose, namely, to
create an ensemble.
Applicant argues that the trade channels for its goods
and those of the registrant are different, asserting that
its goods are sold in shoe stores or in a separate section
Ser. No. 75/478,836
8
of a department store from that in which the registrant's
apparel would be sold. Even if we accept applicant's
contention regarding trade channels, because women will
frequently want to match their shoes to their outfits, and
they may well visit both the dress department and the shoe
department of a department store, or a dress store and a
shoe store, when shopping for an ensemble or outfit.
Applicant also asserts that its goods and those of the
registrant are sold "to totally different types of
consumers." Brief, p. 5. Applicant has not submitted any
evidence in support of this statement, and it is
contradicted by the very identifications of goods, i.e.,
applicant's goods include "women's shoes" and the
registrant's goods are identified as "ladies and misses,"
such nomenclature indicating women's dress sizes.
Accordingly, we must deem applicant's and the registrant's
goods to be sold to the same types of consumers, namely,
women who are members of the general public.
With respect to the duPont factor of "the nature and
extent of any actual confusion," applicant notes that it
has used its mark since 1983, while the cited registrations
claim use, and were registered, prior to that date.
Applicant points to the lack of evidence of actual
confusion during this 17-year period in support of its
Ser. No. 75/478,836
9
claim that confusion is not likely. However, we have no
information from the registrant as to its experiences with
regard to any actual confusion, nor do we have any evidence
about the registrant's activities, or even the nature and
extent of applicant's sales and advertising, from which we
can conclude that there has been an opportunity for
confusion to occur if that were likely. See In re
Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984). In
particular, we note that at page 9 of its brief applicant
states that its goods are "shoes primarily for children."
If, indeed, applicant uses its mark primarily on children's
shoes, that may explain why it has not experienced any
confusion between such goods and the registrant's clothing.
However, because applicant is seeking to register its mark
for women's as well as children's shoes, we must consider
the question of likelihood of confusion with respect to all
the goods identified in the application. Thus, although
this factor does not weigh in favor of a finding of
likelihood of confusion, neither can we say that it weighs
in favor of not finding likelihood of confusion.
Finally, applicant points to the fact that The Krystal
Company was able to register KRYSTAL for various items of
apparel (the other registration which has been cited
against applicant's application) despite the existence of
Ser. No. 75/478,836
10
the various Crystal Brands' registrations on the Register.
Applicant argues that it would be unfair to allow KRYSTAL
to be registered, when it is for more similar goods to the
cited CRYSTAL registrations, and to find likelihood of
confusion between applicant's marks and these same
registrations. We frankly acknowledge that we do not know
why KRYSTAL was registered despite the existence of Crystal
Brands' various CRYSTAL marks. Because the file of that
application is not of record, we cannot determine whether
Crystal Brands consented to the registration, or whether
there were any other factors that persuaded the Examining
Attorney that confusion was not likely. Whatever the
reason, and even if the Examining Attorney committed an
error in allowing the registration, the question before us
at this point is whether applicant's mark is likely to
cause confusion with the various Crystal Brands marks, and
for the reasons we have already discussed, we find that
such confusion is likely.8

8 To the extent that the KRYSTAL registration relates to the
duPont factor of "the number and nature of similar marks in use
on similar goods," the existence of this single registration is
not sufficient to persuade us that the scope of protection for
the Crystal Brands registrations is so limited that it does not
extend to applicant's use of the very similar mark CRYSTAL and
design for shoes. Although the coexistence of the CRYSTAL and
KRYSTAL registrations favors applicant in the likelihood of
confusion analysis, it is far outweighed by the other duPont
factors, all of which militate in favor of a finding of
likelihood of confusion.
Ser. No. 75/478,836
11
We should also add that the various cases applicant
has cited in support of its position are distinguishable on
their facts, and therefore not persuasive of a different
result in this case. In particular, In re British Bulldog
Ltd., 224 USPQ 854 (TTAB 1984) involved marks which,
although identical in appearance and pronunciation, had
different connotations because of the respective goods on
which they were used; further, the goods themselves were
found not to be related. Similarly, Faultless Starch Co.
v. Sales Producers Assoc. Inc., 530 F.2d 1400, 189 USPQ 141
(CCPA 1976) involved goods which were very different from
each other (canned foods and laundry starch), as compared
with the goods at issue here.
Accordingly, we affirm the refusal of registration
with respect to Crystal Brands' registrations Nos. 841,287;
764,347 and 404,730.
We turn next to a determination of whether applicant's
mark, CRYSTAL and design, used in connection with women's
and children's shoes, is likely to cause confusion with the
mark KRYSTAL, registered for "clothing, namely, T-shirts,
golf shirts, polo shirts, hats, visors, shorts, sweaters,
sweatshirts, sweatpants, jackets, wind breakers, and
aprons."
Ser. No. 75/478,836
12
Considering first the marks, for the reasons stated
above, we find that CRYSTAL is the dominant element of
applicant's mark. Applicant's and registrant's marks are
obviously identical in pronunciation and connotation; in
addition, we find them to be similar in appearance. The
single difference in the words is the initial letter, in
which the cited mark is misspelled with a "K". However,
consumers are not likely to note or remember this slight
difference in spelling. Under actual marketing conditions
consumers do not have the luxury to make side-by-side
comparisons between marks, and instead must rely on hazy
past recollections. Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980). Nor does the
presence of the flower design in applicant's mark serve to
distinguish the marks. To the extent that consumers will
even note the presence or absence of this design, they will
consider the CRYSTAL and design mark to be a variant of the
cited mark. Thus, when the marks are considered in their
entireties, they convey the same commercial impression.
With respect to the goods, although there is not the
same complementary nature between applicant's goods and
those listed in the KRYSTAL registration as there is
between applicant's goods and those in the Crystal Brands
registrations, the Examining Attorney has made of record
Ser. No. 75/478,836
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several third-party registrations which show that goods of
the same type as applicant's and of this registrant's can
emanate from a single source, and be sold under the same
mark. For example, A and design is registered for, inter
alia, shoes, jackets, sweat shirts and sweatpants,
sweaters, shorts and T-shirts9; LILIUM is registered for,
inter alia, jackets, sweaters, t-shirts, hats and shoes10;
LITTLE IMPRESSIONS and design is registered for, inter
alia, shoes and T-shirts11; and LITTLE BRAT is registered
for, inter alia, children's clothing, namely, shorts,
T-shirts, sweat shirts, sweat pants, jackets and shoes.
As for the channels of trade, even if we assume that
applicant's women's and children's shoes would be sold in
different retail stores or in different departments of
retail department stores than the registrant's clothing
items, they are all generally items of apparel which would
be purchased by the same classes of consumers and for
similar purposes, since people buy shoes as well as
clothing to cover and adorn themselves.
Thus, we find that the Examining Attorney has
demonstrated a sufficient relationship between applicant's

9 Registration No. 2,282,056.
10 Registration No. 2,279,350.
11 Registration No. 1,978,947.
Ser. No. 75/478,836
14
and the registrant's goods that, if sold under similar
marks, confusion would result.
Applicant has not specifically made the argument with
respect to this cited registration, as it has with the
Crystal Brands' registrations, that there have been 17
years of concurrent use without any evidence of actual
confusion. To the extent that applicant's comments in its
brief were meant to apply to The Krystal Company's
registration also, we reiterate our comments that we have
no information about the experience of the registrant
regarding any actual confusion it might have experienced,
nor do we have any information about the geographic area or
extent to which applicant's and the registrant's goods
bearing their respective marks have been sold or
advertised. Thus, we cannot deem this factor to weigh in
applicant's favor.
A duPont factor which does weigh in applicant's favor
is the co-existence on the Register of both the Crystal
Brands and The Krystal Corporations' registrations for very
similar marks for very similar goods, goods which are more
similar to each other than are applicant's to either
registrant's. However, as we stated previously, we do not
know the reason that The Krystal Corporation's mark was
approved for publication and subsequently registered. And,
Ser. No. 75/478,836
15
as we also stated, this factor favoring a finding of no
likelihood of confusion is not sufficient, in view of the
other factors which favor a finding of likelihood of
confusion, to warrant reversing the refusal of
registration.
Decision: The refusals of registration based on
Registrations Nos. 841,287; 764,347; 404,730 and 2,033,261
are affirmed.
R. F. Cissel
E. J. Seeherman
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board