Tierra Products AB

Trademark Trial and Appeal Board

Sep 3, 2003

No. 75831238 (T.T.A.B. Sep. 3, 2003)

Mailed: September 3, 2003
Paper No. 13
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Tierra Products AB, by assignment from Anders
Andersson1
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Serial No. 75/831,238
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Richard M. LaBarge of Marshall, Gerstein & Borun for
applicant.
Amy Gearin, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
_______
Before Hanak, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Applicant filed on October 21, 1999 an application to
register on the Principal Register the mark shown below
1 The records of the Assignment Branch of the USPTO indicate that
this application was assigned from Anders Andersson (a Swedish
citizen) to Tierra Products AB (a corporation of Sweden). See
Reel 2436, Frame 0680. (We note that Anders Andersson had, on
September 26, 1999, filed application Serial No. 75/649,268 for
the mark TIERRA (in typed form) for the same identified goods in
International Classes 18 and 25, based on the original
applicant’s assertion of a bona fide intention to use as well as
Section 44 of the Trademark Act, 15 U.S.C. §1126. That
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/831238
2
for goods amended to read: “rucksacks and all-purpose bags
sold through sporting goods stores” in International Class
18, and “clothing, namely, shirts, pants, shorts, jackets,
caps, gloves, gaiters, sweaters, and underwear for
children, women, and men” in International Class 25. The
application is based on the original applicant’s assertion
of a bona fide intention to use the mark. Upon requirement
of the Examining Attorney, applicant included the following
translation of the mark: “‘Tierra’ is Spanish for earth,
land, or soil.”
Registration was refused as to both classes of goods
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used on
its identified goods, so resembles the registered mark
TIERRA for “luggage” in International Class 182 as to be
likely to cause confusion, mistake or deception.
application was also assigned to Tierra Products AB; and action
on it is currently suspended in Law Office 115.)
2 Registration No. 2,462,350, issued June 19, 2001 to Skyway
Luggage Company. The registration includes the following
statement: “‘Tierra’ is ‘earth,’ ‘world,’ ‘land,’ ‘ground’ or
‘soil.’”
Ser. No. 75/831238
3
When the refusal was made final, applicant appealed as
to the Class 25 goods only.3 Briefs have been filed, but
applicant did not request an oral hearing.
Our determination under Section 2(d) is based on an
analysis of all the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, 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
and/or services. 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).
Turning first to a consideration of the marks,
applicant’s mark and the registered mark are virtually
identical. The word TIERRA is the cited registrant’s mark
and it is the dominant feature of applicant’s mark. See In
re National Data Corporation, 753 F.2d 1056, 224 USPQ 749
3 Thus, applicant has abandoned the application as to the Class
18 goods. See Section 12(b) of the Trademark Act, 15 U.S.C.
§1062(b). See also, TMEP §718 (3d ed. 2002).
Ser. No. 75/831238
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(Fed. Cir. 1985). While applicant’s mark shows the word in
stylized lettering and includes a design of an
outdoorsman’s ax or pick, this does not sufficiently
distinguish the marks because purchasers are unlikely to
remember the specific differences, focusing more on the
word TIERRA. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d (Fed. Cir., June 5, 1992).
Applicant’s mark and the registered mark are identical
in sound and connotation, and are very similar in
appearance and commercial impression.
The question then becomes whether the Examining
Attorney has demonstrated that various items of clothing
(applicant’s goods) and luggage (registrant’s goods) are
related to such a degree that consumers would expect
clothing and luggage sold under the respective marks to
emanate from a single source.
The Examining Attorney argues that the goods are
“highly related”; and that she “must also consider any
goods or services in the registrant’s normal fields of
expansion to determine whether the registrant’s goods or
services are related to the applicant’s goods or services
under Section 2(d).” (Brief, pp. 2-3.)
Ser. No. 75/831238
5
The only evidence made of record by the Examining
Attorney consists of 15 third-party registrations, which
are based on use in commerce, and which include both
clothing and luggage in the identifications of goods, to
show that “luggage and clothing emanate from a single
source.” (Final Office action, p. 2.)
Applicant argues that the Examining Attorney has not
established that these goods are sufficiently related to
result in a likelihood of confusion; that the mere
registration of a few marks for both clothing and luggage
does not provide a reliable basis for concluding that
ordinary purchasers expect to see luggage manufacturers
using their marks for clothing; that, in fact, applicant’s
evidence shows the contrary, i.e., ordinary purchasers do
not expect that luggage brands are normally used on
clothing; that luggage and clothing are sold in different
channels of trade; and that registrant’s mark is not a
famous mark.
Applicant’s evidence4 consists of printouts of pages
from the web sites of Samsonite Inc. (Exhibit A) and the
4 Applicant submitted evidence (Exhibits A-F) for the first time
with its brief on appeal. Normally, material submitted for the
first time with applicant’s brief would be excluded as untimely
submitted. See Trademark Rule 2.142(d), and TBMP §1207.01 (2d
ed. June 2003). However, in this case, the Examining Attorney
did not object thereto, and, in fact, she discussed the evidence
treating it as if it was of record. See TBMP §1207.03 (2d ed.
Ser. No. 75/831238
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cited registrant, Skyway Luggage Company, (Exhibit B)
showing that neither luggage company offers any clothing of
any type (although Samsonite offers items such as luggage
locks, toiletry kits, umbrellas)5; a printout from a web
site named “reshare.com” with a section on the luggage
industry beginning with the following statement: “The
luggage industry consists only of manufacturers and
retailers. 70% of all products are sold through specialty
stores and 30% through department stores.” (Exhibit C); and
printouts of pages from the web sites of J.C. Penney, Sears
and Macy’s (Exhibits D-F) showing that luggage sold in
department stores is not offered in the clothing
department.
June 2003). Accordingly, the Board considers applicant’s
evidence stipulated into the record.
5 Applicant also made reference in its brief to Samsonite Inc.’s
intent-to-use applications for clothing items, all of which
Samsonite abandoned, contending that this shows that luggage
companies do not make clothing and purchasers do not expect to
find luggage trademarks on clothing. The Examining Attorney
argues that these Samsonite applications (as well as applicant’s
own involved application) lend credence to her position that the
goods are related. Neither applicant nor the Examining Attorney
submitted copies of the applications into the record.
The Board finds this information to be neutral, and not
supportive of either position. First, it is merely a statement
with no supporting evidence. Second, even if proper copies of
Samsonite’s applications had been submitted (by either applicant
or the Examining Attorney), third-party intent-to-use
applications are probative only of the filing dates. We find
that this neither supports nor contravenes any finding on the
relatedness of the involved goods.
Ser. No. 75/831238
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Having carefully reviewed the evidence, we conclude
that the Examining Attorney has not made a prima facie
showing that these goods are related.
The third-party registrations submitted by the
Examining Attorney are not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them. Such third-party registrations
nevertheless have some probative value to the extent they
may serve to suggest that such goods are of a type which
may emanate from the same source. See In re Digirad Corp.,
45 USPQ2d 1841, 1844 (TTAB 1998); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky
Duck Mustard Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB
1988).
The problem in this case is that the Examining
Attorney must establish the relatedness of the goods, and
while we can consider the third-party registrations to be
of some limited probative value on this issue, there is no
further evidence to support the Examining Attorney’s
position (for example, advertisements showing both clothing
and luggage offered for sale, and catalog excerpts showing
that these goods are offered for sale in the same catalog).
Applicant, however, has submitted evidence to show the
Ser. No. 75/831238
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goods are not related and do not move in the same channels
of trade.
The Examining Attorney also relied on the decision of
the Board in the case of Jantzen, Inc. v. Evans-Aristocrat
Industries, Inc., 147 USPQ 531 (TTAB 1965), and she argues
that the Board has found “baggage, portfolios and
pocketbooks” to be “closely related to swim suits and a
line of apparel for men, women and children.” (Brief, p.
5.) However, in that inter partes case, the Board
explained and held as follows (147 USPQ at 532):
In view of the extensive advertising
and the amount of sales of ‘JANTZEN’
products [about $51,000,000 annually],
such mark must have made a substantial
impact on the purchasing public and, in
addition, the record establishes that
petitioner has used this mark not only
on beach and sportswear but also on
coordinates thereto such as costume
jewelry, beach towels and beach bags.
Since pocketbooks and related items of
luggage would normally be considered as
accessories or coordinates to beach or
sportswear, the goods involved under
these marks must be considered as
closely related in kind.
However, this statement by the Board clearly relates
to luggage which is related to pocketbooks, not to a
general relationship between luggage on the one hand, and
beachwear or sportswear on the other hand. Although
pocketbooks (and other non-clothing items, such as jewelry)
Ser. No. 75/831238
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have been viewed as accessories to clothing (perhaps
because these items are frequently matched to clothing to
form an outfit), there is no evidence in the record now
before us that people match their luggage to their
clothing.
Thus, on this ex parte record, we are constrained to
find that the Examining Attorney has not established a
likelihood of confusion. See In re Digirad Corp., supra;
and In re Albert Trostel & Sons Co., supra.
Applicant’s argument that it does not believe the
cited mark is famous or well known is misplaced in the
context of this ex parte appeal. Applicant’s belief that
the registered mark is not famous is not sufficient to make
this du Pont factor one which is to be considered herein,
and the Examining Attorney has provided no evidence
thereon. Thus, the du Pont factor of fame of the prior
mark is irrelevant because there is no evidence thereon.
See Octocom Systems Inc. v. Houston Computer Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).
Decision: The refusal to register the Class 25 goods
under Section 2(d) is reversed. The application stands
abandoned as to the Class 18 goods because the refusal to
register with regard thereto was not appealed by applicant,
Ser. No. 75/831238
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and the application will proceed to publication for the
Class 25 goods only.