Aktieselskabet af 21.november 2001

Trademark Trial and Appeal Board

Mar 31, 2008

No. 76556260 (T.T.A.B. Mar. 31, 2008)

Mailed: March 31, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

In re Aktieselskabet af 21.november 2001
_______

Application No. 76556260
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Bassam N. Ibrahim, Holly N. Ford (on the brief), of
Buchannan Ingersoll & Rooney, PC, for applicant.

Rudy Singleton, Examining Attorney, Law Office 102 (Karen M.
Strzyz, Managing Attorney).
_______

Before Bucher, Mermelstein, and Wellington, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

On October 29, 2003, Aktieselskabet af 21.november 2001
filed an application to register the mark ONLY (in standard
characters) on the Principal Register for the goods set out
below:1
Class Goods
3 Soaps for personal use only; perfume; essential oils for personal use, including bath, baby, and dentifrices.
92 Spectacles, spectacle frames, tinted eyeglasses and sunglasses.
14
Based on section 1(b) only jewelry, namely, necklaces, chains, rings, bracelets,
earrings, charms, broaches, namely, pins being jewelry, cuff links, tie pins; artificial
jewels for fashions use, namely, costume jewelry; based on section 1(b) and section
44 chronometric instruments, namely, watches and clocks.

1 Filed October 29, 2003, alleging a bona fide intent to use the
mark in commerce and ownership of three foreign registrations.
Trademark Act §§ 1(b), 44(e).
2 International Class 9 has not been refused registration.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Application No. 76556260
2
Class Goods
18
Bags made of leather and imitation leather, namely, hand bags, overnight bags;
traveling bags; rucksacks, pouches, shoulder bags; textile shopping bags, canvas
shopping bags canvas shoulder bags, wallets, purses; vanity cases sold empty;
umbrellas.
25
Clothing, namely, skirts, jeans, safari-style clothing, namely, shirts, jackets, hats,
dresses, skirts, shorts, and trousers; jackets, overcoats, one-piece dresses, blouses,
two-piece dresses, hats, gloves, sweatshirts, pollo-style [sic] shirts, blousons, and
sweaters; footwear, namely, shoes, boots, and sandals.
26 Based on section 1(b) only hairclips of precious metals and stones.

The examining attorney issued a final refusal to
register under Trademark Act § 2(d), 15 U.S.C. § 1052(d), on
the ground that applicant’s mark so resembles the marks in
the following two registrations,
Reg. No Mark Class Goods
19733943 ONLY 25 Sportswear, namely shirts, dresses, trousers, T-shirts, blouses, tops, pants, shorts, skirts, warm-up suits, and jackets.
29465724 ONLY 3
Liquid cleaner for household, commercial and industrial use;
disposable wipes impregnated with liquid cleaner; utility articles for
cleaning purposes, namely disposable pads wipes for impregnated
with chemicals or compounds for cleaning, scrubbing, wiping,
dusting or polishing; all purpose cleaning preparations for household,
commercial and industrial use.

that it would, if used on or in connection with the
identified goods, be likely to cause confusion, to cause
mistake, or to deceive.
Applicant appealed. Both applicant and the examining
attorney have filed briefs. We affirm.

3 Registered May 7, 1996, based on use of the mark in commerce.
Filings under Trademark Act §§ 8, 9, & 15, accepted, granted, and
acknowledged.
4 Registered May 3, 2005, based on use of the mark in commerce.
Application No. 76556260
3
I. Applicable Law
We base our determination under Section 2(d) on an
analysis of all of the probative evidence of record bearing
on the likelihood of confusion. See In re E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973);
see also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re
Azteca Rest. Enter., Inc., 50 USPQ2d 1209 (TTAB 1999).
II. Record on Appeal
In support of his refusal, the examining attorney
submitted 35 third-party registrations indicating
registration under the same mark for goods including those
of applicant and those of the cited registrants.
Applicant submitted 24 registrations indicating that
Application No. 76556260
4
the mark ONLY is registered as a
significant part of several marks that
comprise the term ONLY in Classes 3, 14,
18, [and] 25.... In addition, it is a
common part of speech the consumer s
have become accustomed to hearing and
distinguishing from other words and
would not expect goods bearing this term
to emanate from the same source. ...
These are merely a representative sample
of the many previously registered marks
incorporating ONLY in connection with
clothing and wearing apparel in Class 25
and cosmetics, jewelry and bags and
other goods in Classes 3, 14, and 18.
The sheer number of these marks
conclusively demonstrates that ONLY is a
very weak term when used in connection
with clothing and all goods in Class 3
(even those as dissimilar as cleaning
supplies and cosmetics).

Attached to applicant’s brief were several pages of
evidence which had not been previously submitted. The
examining attorney’s objection to consideration of this
evidence is sustained. Trademark Rule 2.142(d).
III. Discussion
A. The Similarity or Dissimilarity of the Marks

Applicant’s mark is identical to the marks in the cited
registrations. All marks are depicted in standard
characters, and are thus independent of any font, color, or
size in which they may be displayed on the goods.
This factor strongly supports a finding of likelihood
of confusion. In re Martin's Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984)(use of
identical mark “weighs heavily against applicant”).
Application No. 76556260
5
B. The Similarity or Dissimilarity and Nature of the
Goods

We begin our analysis with the premise that, because
the marks at issue are legally identical, the extent to
which the applicant’s and registrant’s goods must be similar
or related to support a finding of likelihood of confusion
is lessened. See In re Opus One Inc., 60 USPQ2d 1812, 1815
(TTAB 2001). It is only necessary that there be a viable
relationship between the goods to support a finding of
likelihood of confusion. See In re Concordia Int’l
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
1. International Class 3
Applicant’s International Class 3 goods are identified
as “soaps for personal use only; perfume; essential oils for
personal use, including bath, baby, and dentifrices.” The
goods in the Registration No. 2946572 are
liquid cleaner for household, commercial
and industrial use; disposable wipes
impregnated with liquid cleaner; utility
articles for cleaning purposes, namely
disposable pads wipes for impregnated
[sic] with chemicals or compounds for
cleaning, scrubbing, wiping, dusting or
polishing; all purpose cleaning
preparations for household, commercial
and industrial use.

The examining attorney contends that fifteen of the
third-party registrations he submitted cover at least some
of applicant’s goods and some of the cited registrant’s,
providing evidence that the those goods are related.
Application No. 76556260
6
Applicant disagrees, arguing that
from a rational point of view, consumers
would not expect these goods, “household
cleaners and the like” and “soaps for
personal use and the like,” ... to
emanate from the same source. ... The
“cleaning products” industry is
enormously broad and thus commonality
which results for the same international
classification of same is simply too
tenuous a connection upon which to find
that the goods are commercially related.
The goods are non-competitive and
clearly have significant differences in
end user and essential characteristics.

Appl. Br. at 4-5.

Third-party registrations which individually cover a
number of different items and which are based on use in
commerce may serve to suggest that the listed goods are of a
type that may emanate from a single source. See In re
Albert Trostel & Sons, 29 USPQ2d 1783 (TTAB 1993); In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB 1988),
aff'd (unpublished) No. 88-1444 (Fed. Cir. Nov. 14, 1988).
We agree with the examining attorney. A number of the
third-party registrations5 support the suggestion that
applicant’s Class 3 goods are of a type which may come from
the same source as the goods identified in the ‘572

5 One registration was issued on the Supplemental Register.
Because such registrations do not enjoy the presumptions of those
on the Principal Register, see Trademark Act § 7, we do not
consider it as probative of whether consumers would expect such
goods to emanate from a common source. We further note that
Registration No. 3007363 covers “cosmetics and all-purpose
cleaning preparations.” As it is not clear that applicant’s
goods are “cosmetics,” we have not considered this registration.
Application No. 76556260
7
Registration. Although applicant suggests that it is not
rational to expect cleaning products such as those of the
prior registrant to come from the same source as personal
care items such as those identified by applicant, the third-
party registrations suggest otherwise. These registrations,
while not evidence of use, clearly show that other purveyors
have registered the same mark for both personal care
products and cleaning products for other purposes.
Accordingly, there appears to be a significant overlap in
the market for such goods, such that use of the same mark
for these respective products is likely to cause confusion.
We accordingly conclude that there is a commercial
relationship between applicant’s goods and those listed in
the ‘572 Registration, and that this factor supports a
finding of likelihood of confusion.
2. International Classes 14 and 18.
Applicant identifies a number of jewelry items, as well
as watches and clocks in International Class 14, and a
variety of bags and luggage, and umbrellas in International
Class 18. The examining attorney argues that these goods
are closely related to the clothing items identified in the
cited registration in that they “are clothing accessories
that often emanate from the same source as the registrant’s
goods.” In support of this argument, the examining attorney
points to 20 of the third-party registrations which
Application No. 76556260
8
submitted. All of these registrations cover clothing items
like those identified in the subject application, as well as
jewelry. Twelve of these registrations also include jewelry
items such as those identified by applicant. Applicant does
not dispute that there is a relationship between these
goods, arguing only that the registrant’s mark is weak.
Again, these third-party registrations suggest that
applicant’s goods and those of the cited registrant are of a
type which might be expected by the consumer to come from
the same source. Albert Trostel & Sons, 29 USPQ2d 1783;
Mucky Duck Mustard Co., 6 USPQ2d 1467.
We again agree with the examining attorney that there
is a significant relationship between the registrant’s
clothing items and applicant’s International Class 14 and 18
goods, and that this is strong support for the examining
attorney’s refusal to register.
3. International Class 25.
Applicant’s International Class 25 goods include
“skirts, ... shirts, ... dresses, ... jackets, ... polo-
style shirts....” These items are identical to the “shirts,
dresses, ... T-shirts, ... skirts, ... [and] jackets”
identified in the ‘394 Registration, strongly supporting a
finding of likelihood of confusion.
Application No. 76556260
9
4. International Class 26.
Neither applicant nor the examining attorney
specifically addressed in their briefs the relationship of
applicant’s International Class 26 goods (“hairclips of
precious metals and stones”) with the cited registrant’s
goods. This appears to have been an oversight, and under
these circumstances,6 we do not find that the issue of
registrability with respect to these goods has been conceded
by either applicant or the examining attorney.
The fact that a hairclip made of “precious metals and
stones” is classified in Class 26,7 as opposed to Class 14
is based on an administrative classification system that is
of no substantive effect on our likelihood of confusion
analysis. In Re Knapp-Monarch Co., 296 F2d 230, 132 USPQ 6,

6 When the appeal was filed, these goods were included in
applicant’s listing of its Class 14 (jewelry) goods. A final
requirement to classify these goods in Class 26 was one of the
issues for appeal at that point. When applicant filed its brief,
it suggested that it would be willing to comply with this
requirement, and the examining attorney requested a remand to
resolve this and other issues involving the identification of
goods. An examiner’s amendment was subsequently entered and the
appeal resumed.
The mark was clearly refused registration with respect to these
goods, see final Office action at 3, along with applicant’s other
jewelry goods. Although applicant’s hairclips have now been
properly classified, applicant had not addressed them
specifically in its earlier-filed main brief, nor did it file a
supplemental brief after the remand. Likewise, the examining
attorney did not separately address these goods in its brief.
7 International Class 14 covers “[p]recious metals and their
alloys and goods in precious metals or coated therewith, not
included in other classes; jewelry, precious stones; horological
and chronometric instruments.” However, applicant’s hairclips
made of precious metals and stones are classified in
International Class 26, because “hairclips” are specifically
included in that class.
Application No. 76556260
10
7 (CCPA 1961)(“The Patent [and Trademark] Office
classification of particular goods is immaterial in
determining the likelihood of confusion....”); Trademark Act
§ 30, 15 U.S.C. § 1112 (classification does not “limit or
extend the applicant’s or registrant’s rights”); Trademark
Rule 2.85(g).
We acknowledge that none of the examining attorney’s
third-party registrations includes hairclips in
International Class 26,8 although they cover a range of
jewelry items (and some of them cover jewelry without
restriction). Despite their classification, applicant’s
hairclips made of precious metals and stones are essentially
of the same kind as applicant’s jewelry, i.e., jewelry to be
worn in the hair. It does not appear that the applicant has
ever contended otherwise throughout examination, when such
goods were clearly subject to the refusal to register
applicant’s other Class 14 goods.
We conclude therefore that applicant’s “hairclips of
precious metals and stones” are substantially related to the
prior registrant’s clothing on the basis of the same third-
party registration evidence.

8 It was not necessary for the examining attorney to do so;
throughout examination, applicant’s hairclips were listed in
Class 14. Unless a refusal has been explicitly restricted to
particular goods within a class, the finding of a likelihood of
confusion with respect to any of the goods in the class results
in refusal of the entire class.
Application No. 76556260
11
C. Channels of Trade
Applicant argues that the channels of trade for its
International Class 3 goods and those of the cited
registrant move in different channels of trade:
The “cleaning products” industry is
enormously broad and thus commonality
which results for the same international
classification of same is simply too
tenuous a connection upon which to find
that the goods are commercially related.
The goods are non-competitive and
clearly have significant differences in
end user and essential characteristics.
...
The practical position here is that
consumers will not expect [the cited
registrant’s goods] to emanate from the
same source as [applicant’s goods] and
thus the likelihood that Registrant’s
mark would be confused with Applicant’s
mark in Class 3 is tenuous at best.

Appl. Br at 5.
Neither the applicant nor the examining attorney have
submitted evidence regarding the channels of trade for most
of the goods at issue here. The only fact of record bearing
on this issue is that some of applicant’s clothing items are
identical to goods in the ‘572 Registration. At least to
that extent, we must assume that they do share the same
channels of trade (and class of customer). In re Elbaum,
211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v.
Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958).
Because we have no evidence as to the channels of trade
for applicant’s goods set out in International Classes 3,
Application No. 76556260
12
14, 18, and 26, we conclude this factor neutral in our
analysis. To the extent applicant’s Class 25 goods are
identical to the cited registrant’s, we find that this
factor supports the refusal to register.
D. The Strength of the Marks
Applicant maintains that “the examining attorney failed
to adequately consider the large number of similar marks in
the class.” Appl. Br. at 5-6. Applicant submitted 24
third-party registrations showing that “the mark ONLY is
registered as a significant part of several marks that
comprise the term ONLY in Classes 3, 14, 18, [and] 25....”
Applicant’s third-party evidence is entitled to little
or no weight. None of applicant’s third-party registrations
consists of the term ONLY alone. Marks such as MEMBERS
ONLY, OFFICERS ONLY, 1 & ONLY, and ONLY NATURAL, to use some
examples from the registrations proffered by applicant, use
the word “only” differently, resulting in a very different
commercial impression than does the term “only” as used
alone in applicant’s mark and in the cited registrations.
Accordingly, we do not agree that this evidence demonstrates
that the marks in the cited registrations are weak.
We add that, even if the marks are considered weak,
such marks are nonetheless entitled to some protection.
King Foods, Inc. v. Town & Country Food Co., Inc., 159 USPQ
44 (TTAB 1968). Here, given the identical marks and
Application No. 76556260
13
identical and closely related goods at issue, confusion
seems inevitable.
E. Sophistication of Purchasers
Finally, applicant argues that its mark “is used on a
trendy chic line of clothing that is not likely to be
confused with Registrant’s use.” Applicant asks us to
assume limitations to its goods which do not appear in its
application; we may not do so.
As identified, applicant’s goods include a number of
clothing items. But neither the clothes nor the customers
for them are limited. We must therefore consider the
pending application to cover all clothing of the type
identified, whether trendy or trashy, chic or schlock.
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 1
USPQ2d 1813, 1816 (Fed. Cir. 1987)(goods in application and
registration may not be limited by extrinsic evidence),
Elbaum, 211 USPQ at 640.
Likewise, we must consider applicant’s potential
customers to include all people who would consider buying
the identified items. Elbaum, 211 USPQ at 640, citing
Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA
1958). With respect to clothing, this class includes
virtually all adults, a group which can not be said to be
sophisticated as a rule.
We consider this factor to be neutral in our analysis.
Application No. 76556260
14
IV. Conclusion
In weighing all the relevant likelihood of confusion
factors, we find that because the marks are identical, the
goods are identical or closely related, and move – at least
in part – in the same channels of trade to the same classes
of consumers, there is a likelihood of confusion with
respect to both cited registrations.
While our conclusion with respect to applicant’s
International Class 26 hairclips, may not be entirely free
from doubt, we must resolve such doubt against applicant. In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993); In re Hyper Shoppes(Ohio) Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly affirmed as to International Classes
3, 14, 18, 25, and 26.9

9 The goods identified in International Class 9 were not subject
to this appeal. Whatever the ultimate result with respect to the
appealed classes, upon termination of the appeal, the application
will be forwarded for issuance of a Notice of Allowance with
respect to International Class 9.