Alex Angelino

Trademark Trial and Appeal Board

Dec 1, 2009

No. 78770866 (T.T.A.B. Dec. 1, 2009)

Mailed: December 1, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Alex Angelino
________

Serial No. 78770866
_______

Douglas E. White of Acronational Law Firm for Alex
Angelino.

Doritt Carroll, Trademark Examining Attorney, Law Office
116 (Michael Baird, Managing Attorney).
_______

Before Cataldo, Taylor and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Alex Angelino, seeks registration on the
Principal Register of the mark depicted below for goods
identified in the application as “shirts, pants, shoes” in
International Class 25.1

1 Application Serial No. 78770866 was filed on December 11, 2005
based upon applicant’s allegation of July 31, 1999 as a date of
first use of the mark in commerce. Color is not claimed as a
feature of the mark.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78770866
2

At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that, as applied to applicant’s goods, the mark
so resembles the mark ANGELINO MY GUARDIAN ANGEL ON THE
ROAD OF LIFE, previously registered (in typed or standard
characters) for, inter alia, goods identified in the
registration as “clothing, namely, dresses, jackets, socks,
belts, knit shirts, sport shirts, sweat shirts, t-shirts,
pants, sweaters, ties, socks, boxer shorts, underwear,
shorts, beach visors, beachwear, swimsuits, hats, caps,
beanie caps, jerseys, pajamas, shoes and footwear,”2 as to
be likely to cause confusion, to cause mistake, or to
deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d).

2 Registration No. 3141079 issued September 12, 2006 reciting, in
addition to the above-listed goods, goods in International
Classes 16 and 28.
Ser No. 78770866
3
Applicant and the Examining Attorney have filed main
appeal briefs. Applicant requested, and obtained, an
extension of time in which to file a reply brief. However,
a reply brief is not of record. We affirm the refusal to
register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The Goods
We find that certain of the goods identified in
applicant’s application, i.e., “pants” and “shoes,” are
identical to goods identified in the cited registration.
We further find that the remaining goods identified in
applicant’s application, i.e., “shirts,” encompass the more
narrowly identified “knit shirts,” “sport shirts,” “sweat
shirts,” and “t-shirts” identified in the cited
Ser No. 78770866
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registration. We also find that many if not all of the
other goods identified in the cited registration are
clothing items that are similar and related to the goods
identified in the involved application. Thus, we find that
the second du Pont factor weighs in favor of a finding of
likelihood of confusion.
Channels of Trade, Classes of Consumers, and Nature of
the Goods

When identical goods or services are recited in an
application and registration with no limitations as to
their channels of trade or classes of consumers, such
channels of trade and classes of consumers must be
considered to be legally identical. 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.”); and In re
Smith and 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.”).
Ser No. 78770866
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We find, therefore, that registrant’s goods and applicant’s
identical goods would be marketed in the same trade
channels and to the same classes of purchasers, while the
related goods will be marketed in some of the same trade
channels and to some of the same classes of purchasers.
The third du Pont factor accordingly weighs in favor of a
finding of likelihood of confusion.
Further, it is well settled that purchasers of casual,
low cost ordinary consumer items are held to a lesser
standard of purchasing care and are more likely to be
confused as to the source of the goods. See Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d
669, 223 USPQ 1281 (Fed. Cir. 1984). We note that neither
applicant’s goods nor those of registrant are restricted to
expensive, designer, or otherwise “high end” clothing. We
must therefore presume that the clothing items involved
herein include ordinary, relatively inexpensive consumer
items which would be purchased without a great deal of care
or sophistication. The fourth du Pont factor accordingly
weighs in favor of a finding of likelihood of confusion.
The Marks
We turn finally to the first du Pont factor, i.e.,
whether applicant’s mark and the cited registered mark are
similar or dissimilar when compared in their entireties in
Ser No. 78770866
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terms of appearance, sound, connotation and commercial
impression. See Palm Bay Imports, Inc., supra. We make
this determination in accordance with the following
principles.
The test, under the first du Pont factor, 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 that confusion as to the source of the goods
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although
the marks at issue must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Finally, in cases such as this, where the
applicant’s goods are identical (in part) to the goods
identified in the cited registration, the degree of
similarity between the marks which is required to support a
Ser No. 78770866
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finding of likelihood of confusion is less than it would be
if the goods were not identical. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
We find, initially, that the dominant feature in the
commercial impression created by applicant’s mark is the
word ANGELINO. These letters appear in very large type
which is wider than the design element and draws the
attention of the viewer. The word ANGELINO also is more
dominant than the design element in the mark because it,
unlike the design element, is subject to ready
pronunciation. Therefore, it is the name ANGELINO that
consumers will use when referring to applicant’s mark and
goods. For these reasons, we find that it is the word
ANGELINO which dominate the commercial impression of
applicant’s mark. We do not ignore the other elements of
applicant’s mark, but we give more weight to the wording in
our comparison of applicant’s mark and the cited registered
mark. See In re National Data Corp., supra.
In terms of appearance, we find that applicant’s mark
is similar to the cited registered mark to the extent that
they both include the word ANGELINO, but that the marks are
dissimilar to the extent that applicant’s mark, but not the
cited registered mark, includes the design element and the
Ser No. 78770866
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cited registered mark contains the wording MY GUARDIAN
ANGEL ON THE ROAD OF LIFE. The very minor stylization of
the lettering in applicant’s mark is not sufficient to
distinguish the marks, given the fact that the cited
registered mark is registered in standard character form
and thus could be displayed in lettering similar to
applicant’s. See, e.g., In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991); In re Pollio Dairy Products Corp.,
8 USPQ2d 2012, 2015 (TTAB 1988); Sunnen Products Co. v.
Sunex International Inc., 1 USPQ2d 1744, 1751 (TTAB 1987);
and In re Hester Industries, Inc., 231 USPQ 881, 883, n.6
(TTAB 1986).
Furthermore, we note that ANGELINO, the word which the
marks share in common, and the only word element in
applicant’s mark, is also the first word in registrant’s
mark. Thus, the name ANGELINO in registrant’s mark carries
more weight in creating the commercial impression of the
mark. Presto Products, Inc. v. Nice-Pak Products Inc., 9
USPQ2d 1895, 1897 (TTAB 1988)(“…[it is] a matter of some
importance since it is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser
and remembered.”). See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692
(“The presence of this strong distinctive term as the first
Ser No. 78770866
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word in both parties’ marks renders the marks similar,
especially in light of the largely laudatory (and hence
non-source identifying) significance of ROYALE.”).
Further, we observe that consumers are often known to
use shortened forms of names, and it is highly likely that
registrant and its goods are referred to as “AGNELINO.”
Cf. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215, 219 (CCPA 1978) (Rich, J., concurring: “the users of
language have a universal habit of shortening full names –
from haste or laziness or just economy of words”).
In terms of sound, we find that the marks are
identical to the extent that ANGELINO would be pronounced
as the first or only element in both. The marks sound
dissimilar to the extent that registrant’s mark also
includes the words MY GUARDIAN ANGEL ON THE ROAD OF LIFE.
In terms of connotation, we find that applicant’s mark
connotes the meanings of ANGELINO supplied by applicant,
i.e., as a native of Los Angeles, California or as a
surname. The word ANGELINO in the cited registered mark
would have the same connotation, and the remaining wording
in registrant’s mark connotes that an ANGELINO is a
guardian angel. We do not find that the design element in
applicant’s mark adds anything specific or definite to the
Ser No. 78770866
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connotation of applicant’s mark; however, the female figure
displayed therein could be interpreted as an angel.
In terms of overall commercial impression, we find
that the marks are similar rather than dissimilar because
they both prominently include the word ANGELINO. The
wording MY GUARDIAN ANGEL ON THE ROAD OF LIFE in
registrant’s mark would be viewed as merely explanatory
language modifying the term ANGELINO shared by both marks,
and it therefore does not serve to distinguish the marks as
source identifiers to such an extent that it renders the
marks more dissimilar than similar. Purchasers familiar
with registrant’s mark, upon encountering identical or
similar goods marketed under applicant’s mark which so
prominently features the word ANGELINO, are likely to
assume that there is a source or other connection between
the respective goods. The presence in applicant’s mark of
the design element and the additional wording in that of
registrant would not relieve them of that misconception.
That is, purchasers are more likely to assume, based on the
presence in both marks of the designation ANGELINO, that a
source connection exists, than they are likely to assume,
based on the presence in registrant’s mark of the
additional wording and the design element in applicant’s,
that no such source connection exists.
Ser No. 78770866
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On balance, and considering the marks in their
entireties, we find them to be similar rather than
dissimilar, and that the first du Pont factor weighs in
favor of a finding of likelihood of confusion. As noted
above, where the applicant’s and registrant’s goods are
identical, the degree of similarity between the marks which
is required to support a finding of likelihood of confusion
is decreased. Century 21 Real Estate Corp. v. Century Life
of America, supra. We find in this case that applicant’s
mark is sufficiently similar to the cited registered mark
that confusion is likely to result from use of the marks on
identical or highly related goods, which are marketed in
identical or overlapping trade channels to identical and
overlapping classes of ordinary purchasers.
In coming to this determination, we have considered
the arguments raised by applicant with regard to the
strength of the mark in the cited registration. Applicant
asserts, and introduced evidence during prosecution of his
application, that ANGELINO is a surname; an alternate
spelling of “Angeleno,” which means a native of Los
Angeles, California; and also the name of a neighborhood in
Ser No. 78770866
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Los Angeles known as Angelino Heights.3 Applicant argues
that, as a result, the term ANGELINO is weak and only
entitled to a narrow scope of protection. We note,
however, that because applicant’s evidence points to
several possible meanings of the word ANGELINO, such
evidence does not establish that ANGELINO has any one
particular meaning, particularly as applied to the goods at
issue herein, namely, clothing.4 As a result, such evidence
does not support a finding that ANGELINO is weak as applied
to such goods. Moreover, even if we were to find, based on
applicant’s evidence, that the word ANGELINO in
registrant’s mark is weak and entitled to a narrow scope of
protection, the scope is still broad enough to prevent the
registration of a highly similar mark for identical or

3 Applicant’s March 12, 2007 response to the examining attorney’s
June 16, 2006 Office action; and applicant’s February 14, 2009
request for reconsideration.
4 Although applicant states on page 8 of his brief that he is not
attacking the validity of the cited registration, we want to be
clear on this point. Section 7(b) of the Trademark Act, 15
U.S.C. § 1057(b) provides that a certificate of registration on
the Principal Register shall be prima facie evidence of the
validity of the registration, of the registrant’s ownership of
the mark and of the registrant’s exclusive right to use the mark
in commerce in connection with the goods or services specified in
the certificate. During ex parte prosecution, an applicant will
not be heard on matters that constitute a collateral attack on
the cited registration. See In re Dixie Restaurants, 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In re Peebles Inc., 23
USPQ2d 1795, 1797 n. 5 (TTAB 1992). Thus, we have given no
consideration to applicant’s remarks in this regard.

Ser No. 78770866
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closely related goods. See In re Farah Mfg. Co., Inc., 435
F.2d 594, 168 USPQ 277, 278 (CCPA 1971).
Applicant further argues that representations made by
the owner of the cited registration in overcoming the
examining attorney’s refusal to register the mark in its
underlying application based upon a likelihood of confusion
with the mark in a prior registration “can be construed as
an admission against interest on the part of the cited
Registrant – and a voluntary limitation on the scope of the
registration, if not virtually an implied consent to the
registration of the present mark.”5
First, applicant cites to no authority for its
contention that ex parte representations made by the owner
of the registration cited herein, and unrelated to
applicant or his involved mark, should be viewed as a
consent to registration of the mark in the involved
application. If applicant wished to obtain the consent of
registrant to registration of his mark, it was incumbent
upon him to obtain express consent during examination of
his application. See TBMP §1207.01(d)(viii). We note that
with regard to an inter partes proceeding before the Board,

5 Applicant’s brief, p. 12.

Ser No. 78770866
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the predecessor to our primary reviewing court stated as
follows:
That a party earlier indicated a contrary opinion
respecting the conclusion in a similar proceeding
involving similar marks and goods is a fact, and
that fact may be received in evidence as merely
illuminative of shade and tone in the total
picture confronting the decision maker. To that
limited extent, a party's earlier contrary
opinion may be considered relevant and competent.
Under no circumstances, may a party's opinion,
earlier or current, relieve the decision maker of
the burden of reaching his own ultimate
conclusion on the entire record.

Interstate Brands Corp. v. Celestial Seasonings Inc., 576
F.2d 926, 198 UPSQ 151, 154 (CCPA 1978). In the present
case, registrant is not a party to this ex parte
proceeding; nor is the file of the application underlying
the cited registration of record herein. Thus,
registrant’s asserted statements are not of record.
Applicant argues that
By making [the cited] registration of record and
the sole ground of rejection herein, it is
submitted that the entirety of said registration
is of record herein, including limitations on its
scope made during its prosecution history, which
may be accessed through the PTO TDR server. If,
however, said evidence is found not to have been
made of record by the Examining Attorney, then
Applicant requests remand for the submittal of
these statements in a Request for
Reconsideration.6

6 Applicant’s brief, p. 12-13, fn 2.
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Again, applicant provides no authority for its contention
that by citing Reg. No. 3141079 during prosecution of the
present application, the Examining Attorney placed the
entire registration and file history into evidence.
Applicant could have timely made these materials of record
during prosecution of its application with its
communications to the Examining Attorney, but failed to do
so. See Trademark Rule 2.142(d) (the record in the
application should be complete prior to the filing of an
appeal). Accordingly, they are not of record.
Furthermore, applicant was aware of the application
underlying the cited registration as early as the Examining
Attorney’s June 16, 2006 Office action, and was afforded
ample opportunity to make such application file of record
prior to filing its brief. As such, we find that applicant
has failed to make the requisite showing of good cause
necessary to remand the application for submission of these
materials at this time.
Finally, applicant argues that “it is important to
note that Applicant’s surname is ANGELINO, and that
Applicant is among the presumably numerous business users
of this surname that enjoy a reasonable expectation that
appropriation of ANGELINO will not be extended exclusively
Ser No. 78770866
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to Registrant….”7 However, our primary reviewing court, the
Court of Appeals for the Federal Circuit, and its
predecessor, the Court of Customs and Patent Appeals, have
held that the interest in avoiding confusion is greater
than the interest in allowing an individual to use his
surname if such use will result in a likelihood of
confusion. 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
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

7 Applicant’s brief, p. 6.
Ser No. 78770866
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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 ANGELINO is applicant’s
name does not give him an unfettered right to use that name
if it conflicts with a previously registered mark.
Summary
Weighing all of the evidence of record as it pertains
to the relevant du Pont factors, we find that a likelihood
of confusion exists. To the extent that any doubts might
exist as to the correctness of this conclusion, we resolve
such doubts, as we must, against applicant. See 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); and In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984).
Decision: The refusal to register is affirmed.