Alpina, tovarna obutve, d.d., Žiri

Trademark Trial and Appeal Board

Feb 8, 2008

No. 79015585 (T.T.A.B. Feb. 8, 2008)

Mailed:
February 8, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Alpina, tovarna obutve, d.d., Žiri
________

Serial No. 79015585
_______

Marsha G. Gentner of Jacobson Holman PLLC for Alpina,
tovarna obutve, d.d., Žiri.

Morgan L. Wynne, Trademark Examining Attorney, Law Office
117 (Loretta C. Beck, Managing Attorney).
_______

Before Walters, Kuhlke and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On August 31, 2005, Alpina, tovarna obutve, d.d., Žiri
filed application Serial No. 79015585 under the provisions
of Section 66 of the Trademark Act of 1946, 15 U.S.C.
§1141f, seeking to register the mark ALPINA and Design,
shown below, for goods ultimately identified as “footwear
of all kinds, including sport shoes” in Class 25.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79015585
2
In response to an inquiry from the Examining Attorney,
applicant submitted a statement explaining that “Alpina”
“has no significance in the relevant trade or industry as
applied to the goods/services listed in the application, no
geographical significance, nor any meaning in a foreign
language.” Applicant also claimed ownership of the
following registrations:
1. Registration No. 1029662 for the mark shown below
for ski boots and mountaineering boots;1

2. Registration No. 1307127 for the mark ALPINA, in
typed drawing form, for mountaineering boots and hiking
boots;2
3. Registration No. 1580171 for the mark ALPINA and
design, shown below, for sports footwear;3 and,

1 Registration No. 1029662, issued January 6, 1976; Sections 8
and 15 affidavits accepted and acknowledged; second renewal.
2 Registration No. 1307127, issued November 27, 1984; Sections 8
and 15 affidavits accepted and acknowledged; renewed.
3 Registration No. 1580171, issued January 30, 1990; Sections 8
and 15 affidavits accepted and acknowledged; renewed.
Serial No. 79015585
3

4. Registration No. 1596521 for the mark ALPINA and
design, shown below, for sports footwear;4

The Trademark Examining Attorney finally refused
registration under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s
mark, when used in connection with “footwear of all kinds,
including sport shoes,” so resembles the mark L’ALPINA,
shown below, for “men’s and women’s cardigans, pullovers,
shirts, caps, berets, gloves, socks, stockings, underwear,
stretch suits and scarves,” as to be likely to cause
confusion.5 The registration includes the statement that
“the drawing of the mark is lined for the colors red and
blue but no claim is made as to color.”

4 Registration No. 1596521, issued May 15, 1990; Sections 8 and
15 affidavits accepted and acknowledged; renewed.
5 Registration No. 091894, issued August 24, 1971, Sections 8 and
15 affidavits accepted and acknowledged; second renewal.
Serial No. 79015585
4

Evidentiary Issues
As indicated above, in response to a request from the
Examining Attorney during the prosecution of the
application, applicant submitted a statement explaining
that “Alpina” “has no significance in the relevant trade or
industry as applied to the goods/services listed in the
application, no geographical significance, nor any meaning
in a foreign language.” In his brief, the Examining
Attorney submitted the definition of the Italian word
“Alpina” meaning “mountain,” citing Collins Mondadori Nuovo
Dizionario Inglese, p. 22 (1995).6 In addition, the
Examining Attorney submitted the definition of “La” from
the Zanichelli New College Italian and English Dictionary
(1990), which according to the Examining Attorney, shows

6 This is an Italian-English dictionary.
Serial No. 79015585
5
that the letter “L” before the word “Alpina” in “L’Alpina”
“is an abbreviated version of the Italian article ‘LA’
which translates to ‘THE’ in English.”7 Based on this
evidence, the Examining Attorney argued that the words
L’ALPINA and ALPINA have the same or similar meanings. The
Examining Attorney requested that the Board take judicial
notice of the definitions.
In its Reply Brief, applicant objected to the Board’s
consideration of the dictionary definitions. Applicant
argued that the Board should not consider this evidence or
the arguments based on it for the following reasons:
1. The Examining Attorney never argued that L’ALPINA
and ALPINA had the same or similar meanings until
his brief;
2. The Board should not take judicial notice of the
dictionary definitions because the record in a
file should be complete before the appeal;
3. The definitions of “Alpina” and “L’Alpina” are
not proper subjects for judicial notice because
(i) there is no evidence to support the assertion
that the definitions are generally known in the
United States, and (ii) applicant has had no

7 Examining Attorney’s Brief, pp. 3-4.
Serial No. 79015585
6
opportunity to check the reliability of the
sources submitted by the Examining Attorney.
At the outset, we note that applicant’s contention
that it has not had an opportunity to check the reliability
of the sources submitted by the Examining Attorney rings
hollow in light of the fact that during the prosecution of
the application, applicant submitted a statement that the
word “Alpina” has no meaning in a foreign language.
Applicant had to have a reasonable basis, presumably with
evidentiary support, to make that statement. Moreover, if
applicant had evidence that it wished the Board to consider
regarding the meaning of its mark in reply to the
definitions submitted by the Examining Attorney, the proper
course of action would have been for applicant to ask the
Board to suspend the appeal and remand the application to
the Examining Attorney with the evidence sought to be
admitted into the record. Trademark Rule 2.142(d), 37 CFR
§2.142(d). See also In re Carvel Corp., 223 USPQ 65, 66
(TTAB 1984); In re Johanna Farms, Inc., 223 USPQ 459, 460
(TTAB 1984); TBMP §1207.02 (2nd ed. rev. 2004).
Also, we find nothing inherently wrong with the
Examining Attorney addressing the meaning of the marks at
issue for the first time in the brief. It is well settled
that in analyzing the similarities or dissimilarities of
Serial No. 79015585
7
the marks, the Board is required to consider the marks in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005); In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). By referring to the meaning of the marks, the
Examining Attorney was explaining why he thought the marks
were similar. He was not asserting a new claim or ground
for refusal. Accordingly, it is not surprising and, in
fact, applicant should have anticipated, that the Examining
Attorney would have addressed each of the four factors
regarding the similarity of the marks in his brief.
Finally, the Board may take judicial notice of the
meaning of words, and may refer to dictionaries or other
recognized authorities for the common meaning of language.
Hancock v. American Steel & Wire Co. of New Jersey, 203
F.2d 737, 97 USPQ 330, 332 (CCPA 1953). See also In re
Johanna Farms Inc., 222 USPQ 607, 610 n.8 (TTAB 1984) (“We
also take judicial notice of French and English language
dictionaries”); University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983);
In re Mark A. Gould, M.D., 173 USPQ 243, 244 (TTAB 1972)
Serial No. 79015585
8
(Board may take judicial notice of the use of a term in
dictionaries or recognized textbooks).
In view of the foregoing, applicant’s objection is
overruled, and the Board will take judicial notice of the
dictionary definitions submitted by the Examining Attorney
and accord them the probative value to which they are
entitled.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., supra.
See also, In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

The first du Pont likelihood of confusion factor
focuses on the similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours &
Co., supra. In a particular case, any one of these means
of comparison may be critical in finding the marks to be
similar. In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB
1988). See also, In re White Swan Ltd., 9 USPQ2d 1534,
Serial No. 79015585
9
1535 (TTAB 1988). In comparing the marks, we are mindful
that the test 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 so that confusion as to
the source of the goods offered under the respective marks
is likely to result. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086
(Fed. Cir. June 5, 1992). The proper focus is on the
recollection of the average customer, who retains a general
rather than specific impression of the marks. Winnebago
Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335,
344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975).
In analyzing the marks in their entireties, a
particular feature or portion of the mark may be given
greater weight if it makes an impression upon purchasers
that would be remembered and relied upon to identify the
products. In re Appetito Provisions Co., 3 USPQ2d 1553,
1554 (TTAB 1987). See also In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“there is
nothing improper in stating that, for rational reasons,
Serial No. 79015585
10
more or less weight has been given to a particular feature
of the mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties”). In this
case, the word portions of the marks (i.e., L’ALPINA and
ALPINA) are the dominant portions of the marks because
consumers will refer to the products by the words. Helene
Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618,
1621 (TTAB 1989); In re Appetito Provisions Co., supra;
Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461,
262 (TTAB 1985).
The words L’ALPINA and ALPINA are visually similar.
Registrant’s mark L’ALPINA incorporates applicant’s entire
mark ALPINA. In fact, in the Italian language, “before
words beginning with a vowel la often becomes l’.”8 Thus,
registrant’s mark is essentially “THE ALPINA.” See In re
Bonnie Keller Collections Ltd., 6 USPQ2d 1224, 1226-1227
(TTAB 1987) (“the only significance of ‘la’ [in LA
LINGERIE] . . . is that it is the feminine definite article

8 The Sansoni Dictionaries: English-Italian Italian-English, p.
1761 (3rd ed. 2002). “La” is the article “the.” Id. “Italian
nouns and adjectives are marked for gender, either masculine or
feminine, and number, either singular or plural. Masculine
singular nouns typically end in –o with the plural form ending in
–i (piatto/piatti ‘dish/dishes’); feminine singular nouns usually
end in –a with plural form ending in –e (casa/case
‘house/houses’).” Facts About The World’s Languages: An
Encyclopedia of World’ Major Languages, Past and Present, p. 343
(2001).
Serial No. 79015585
11
in French, preceding the feminine French noun,
‘lingerie’”); In re Le Sorbet, 228 USPQ 27, 29 (TTAB 1985)
(“ the only conceivable significance of “le” in the term
sought to be registered [LE SORBET] is that it is the
masculine definite article in French, preceding the
masculine French noun, sorbet”). To the extent that the
ordinary American purchaser would not recognize L’ALPINA as
meaning “the Alpina,” Italian-speaking consumers in the
United States would. In re Thomas, 79 USPQ2d 1021, 1024
(TTAB 2006) (“the ordinary American purchaser who is
knowledgeable in the foreign language,” will translate the
mark into its English equivalent).
Applicant argued that the word portion of registrant’s
mark looks more like LALPINA than L’ALPINA because the
apostrophe appears to be part of the design element.9 While
there is merit to applicant’s argument, we see registrant’s
mark as L’ALPINA because the apostrophe is located exactly
where the apostrophe would be expected in an Italian word.
Moreover, as discussed below, the mountain design and word
“Alpina” conjure up an alpine image or commercial
impression rather than the fanciful term LALPINA.
L’ALPINA and ALPINA also sound alike.

9 Applicant’s Brief, p. 7.
Serial No. 79015585
12
L’ALPINA and ALPINA have the same meaning (i.e.,
Alpine or mountain).10 The “alpine” or “mountain” meaning
of the word portion L’ALPINA of the registered mark is
emphasized by the design of the mountain in registrant’s
mark. The fact that the word portion of the mark appears
in conjunction with a drawing of a mountain should put to
rest applicant’s argument that the word portion is the
fanciful word “Lalpina” rather than the word “L’Alpina.”
Accordingly, the commercial impression engendered by the
marks is similar because both marks conjure up an image of
alpine or mountain clothing and shoes.
Applicant also argued that “there is nothing in the
record to show that LALPINA, or L’ALPINA is particularly
distinctive.”11 On the other hand, applicant has made no
evidence of record to show that L’ALPINA, or mountain, is
descriptive of registrant’s clothing. On this record, we
could at most conclude that L’ALPINA is suggestive that
registrant’s clothing products are designed for use in the
mountains. However, even if we consider the cited
registered mark as a weak mark, it would still prevent the

10 Collins Mondadori: Nuovo Dizionario Inglese, p. 22 (1995).
(2001).
11 Applicant’s Brief, p. 7.
Serial No. 79015585
13
registration of a similar mark used in connection with
related goods (see the discussion infra). Likelihood of
confusion “is to be avoided, as much between ‘weak’ marks
as between ‘strong’ marks.” King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109
(CCPA 1974).
The marks at issue certainly have some differences.
However, we find that the word L’ALPINA is the dominant
element of the registrant’s mark, and that it is entitled
to more weight in the likelihood of confusion analysis
because that is what consumers are likely to remember.
Because the dominant element of the registered mark is
similar in appearance, sound, and meaning with applicant’s
mark, and the overall commercial impression of both marks
is similar, we conclude that the marks in their entireties
are more similar than dissimilar.
B. The similarity or dissimilarity and nature of the
goods.

It is well settled that the goods of the applicant and
the registrant do not have to be identical or directly
competitive to support a finding that there is a likelihood
of confusion. It is sufficient if the respective goods are
related in some manner and/or that the conditions
surrounding their marketing are such that they would be
Serial No. 79015585
14
encountered by the same persons under circumstances that
could, because of the similarity of the marks used in
connection therewith, give rise to the mistaken belief that
they emanate from or are associated with a single source.
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
The goods in the cited registration are “men’s and
women’s cardigans, pullovers, shirts, caps, berets, gloves,
socks, stockings, underwear, stretch suits and scarves.”
The goods in the application are “footwear of all kinds,
including sport shoes.” “Footwear of all kinds”
encompasses dress shoes and casual shoes.
In support of his argument that the registrant’s
clothing and applicant’s footwear are related products, the
Examining Attorney submitted copies of 25 third-party
registrations comprising a small sample from the Trademark
Office database in which the registered marks include both
clothing and shoes in the description of goods.12 Although
third-party registrations are not evidence that the marks
have been used in commerce, they have some probative value
because they serve to suggest that the listed products may

12 December 14, 2006 Office Action.
Serial No. 79015585
15
emanate from a single source. In re Albert Trostel & Sons
Co., supra at 1785-1786; In re Mucky Duck Mustard Co.,
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
In addition, we find persuasive the Examining
Attorney’s analysis that clothing and shoes are
complementary products, derived from In re Melville Corp.,
18 USPQ 1386 (TTAB 1991). In that case, the Board
explained why clothing, on the one hand, and shoes, on the
other are complementary products.
A woman’s ensemble, which may consist
of a coordinated set of pants, a blouse
and a jacket, is incomplete without a
pair of shoes which match or contrast
therewith. Such goods are frequently
purchased in a single shopping
expedition. When shopping for shoes, a
purchaser is usually looking for a shoe
style or color to wear with a
particular outfit. The items sold by
applicant and registrant are considered
complementary goods. They may be found
in the same stores, albeit in different
departments.

Id. at 1388.
Applicant argued that the evidence submitted by the
Examining Attorney to prove that clothing and shoes were
related products did not meet the “something more” standard
required by the Court of Customs and Patent Appeals, the
predecessor to our primary reviewing court, in Jacobs v.
International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641
Serial No. 79015585
16
642 (CCPA 1982) (“to establish likelihood of confusion a
party must show something more than that similar or even
identical marks are used for food products and for
restaurant services”). We disagree. We find that the
complementary nature of shoes and clothing combined with
the third-party registrations submitted by the Examining
Attorney are sufficient to establish a prima facie showing
of relatedness, particularly because registrant’s
description of goods includes socks and stockings.
Moreover, applicant did not rebut the showing of the
Examining Attorney with countervailing evidence
demonstrating that clothing and shoes are not commercially
related products by submitting other registrations, a
declaration from someone with knowledge, or by other means.
In re Comexa Ltda., 60 USPQ2d 1118, 1121 (TTAB 2001).
In view of the foregoing, we find that registrant’s
clothing products and applicant’s footwear are
complementary products.
C. The similarity or dissimilarity of established,
likely-to-continue trade channels and classes of
customers.

With respect to these factors, neither the Examining
Attorney, nor the applicant, submitted any evidence
regarding how and to whom clothing and shoes are sold.
However, because there are no restrictions in the
Serial No. 79015585
17
description of goods in the application or cited
registration, we may presume that registrant’s clothing and
applicant’s footwear may be sold in the same channels of
trade and to the same classes of consumers. Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1005 (Fed. Cir. 2002). In addition, shoes and
clothing are commonly sold in department stores and socks
and stockings are sold in shoe stores. Moreover, as we
discussed in the previous section, applicant’s shoes and
registrant’s clothing are complementary products, and
therefore they can be marketed to the same classes of
customers. Because the channels of trade overlap and the
classes of consumers are the same, these du Pont likelihood
of confusion factors favor a finding of likelihood of
confusion.
D. The nature and extent of any actual confusion.
Applicant argued that although it has used the mark
sought to be registered in commerce with the United States
since at least 1995, it is not aware of any instances of
confusion.13 To support this argument, applicant submitted
the declaration of Andraž Kopač, applicant’s President.
Mr. Kopač testified to the following facts:

13 Applicant’s Brief, p. 10.
Serial No. 79015585
18
1. Applicant’s footwear has been advertised in the
United States;
2. Between 1995 and 2005, applicant has sold an
average of 71,379 pairs of footwear, including
50,525 pairs in 2005;
3. Applicant’s sales of its ALPINA footwear in 2005
was $1,668,375, presumably wholesale because Mr.
Kopač testified that retail sales would be
higher.
The fact that an applicant in an ex parte case is
unaware of any instances of actual confusion is generally
entitled to little probative weight because the Board has
no way to know whether the registrant is likewise unaware
of any instances of confusion. In addition, it is not
usually possible to determine whether there has been any
significant opportunity for actual confusion to have
occurred. In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB
2001). However, in the case of In re General Motors Corp.,
23 USPQ2d 1465, 1470 (TTAB 1992), the Board identified
three factors in an ex parte proceeding that allow it to
assess the probative value of the absence of any reported
instances of actual confusion: (1) a long period of
marketing success; (2) marketing a major or expensive
purchase; and, (3) no reported instances of confusion.
Serial No. 79015585
19
We are not persuaded that the apparent absence of
actual confusion is entitled to significant weight in this
case. In General Motors, applicant had been selling
automobiles for thirty years without any reported instances
of actual confusion whereas applicant herein has used its
mark for only eleven years. See In re Opus One Inc., supra
(thirteen years operating a single restaurant in Detroit
was not sufficient to demonstrate national renown and
prominence). In addition, we do not find applicant’s sales
figures especially impressive such that they demonstrate
sustained marketing success. Applicant has provided no
evidence to put its sales figures into perspective.
Nevertheless, we believe that it is safe to say that
virtually the entire population in the United States wears
and purchases footwear. Thus, applicant’s sales of 50,525
in 2005 would constitute a small portion of the total shoe
sales in that year.
With respect to the nature of the products at issue,
applicant’s footwear does not constitute a major or
expensive purchase. According to applicant’s witness, in
2005, applicant sold 50,525 pairs of shoes in the United
States generating $1,668,375. That is $33 a pair
(wholesale).
Serial No. 79015585
20
Finally, despite Mr. Kopač’s testimony, we still do
not know whether there has been an opportunity for
confusion to occur. Mr. Kopač testified that applicant has
exported footwear for distribution and sale into the United
States, but we do not know where in the United States the
footwear has been distributed and whether registrant
distributes and sells its clothing in the same geographic
markets. Mr. Kopač also testified that applicant has
advertised its footwear in the United States. However, we
do not know in what markets applicant has advertised its
products and the extent of applicant’s advertising.
To the extent that General Motors sets forth an
exception to the general rule that the absence of actual
confusion is entitled to little probative value in an ex
parte proceeding, we find that applicant does not fall
within that exception.
E. The market interface between applicant and registrant.
Applicant argued that its ownership of three prior
ALPINA registrations for hiking boots, mountaineering
boots, and sports footwear presents a laches and estoppel
situation attributable to the registrant. Registration No.
1307127 for the mark ALPINA, in typed drawing form, issued
on November 27, 1984, and therefore has coexisted with the
cited registration for twenty-three years.
Serial No. 79015585
21
Applicant is essentially asserting a prior
registration defense in an ex parte proceeding. The prior
registration defense is an affirmative defense in an inter
partes proceeding. It provides that if an applicant owns a
registration for the same or substantially identical mark
for the same or substantially identical goods, the opposer
cannot be damaged by the registration of applicant’s
current application. Morehouse Mfg. Corp. v. J. Strickland
& Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969). To be
successful, the prior registration defense requires that
goods in the application be identical, or nearly so, to the
goods in the prior registration. Morehouse Mfg. Corp. v.
J. Strickland & Co., supra (“there is no added damage from
the second registration of the same mark if the goods named
in it are in fact the same”). See also Joseph & Feiss Co.
v. Sportempos, Inc., 451 F.2d 1402, 172 USPQ 235, 236 (CCPA
1971) (“the goods specified in applicant’s registration and
application are in part identical and otherwise considered
substantially the same, or so related as to represent in
law a distinction without a difference”).
Applicant’s argument is not unique. The Board faced
the same issue in the case of In re Sunmarks Inc., 32
USPQ2d 1470 (TTAB 1994). In that case, the application for
ULTRA for “gasoline, motor oil, automotive grease, general
Serial No. 79015585
22
purpose grease, machine grease and gear oil” was refused
registration even though applicant owned two registrations
for ULTRA for “motor oil” and for “gasoline for use as
automotive fuel, sold only in applicant’s automotive
service stations.” In affirming the refusal to register,
the Board adopted the requirement from the prior
registration defense that applicant’s prior registration
must encompass the same or substantially similar goods:
“[t]he Office should not be barred from examining the
registrability of a mark when an applicant seeks to
register it for additional goods as it does here, even when
the additional goods are closely related to those listed in
a prior registration.” In re Sunmarks Inc., supra at 1472.
In this case, we find that “footwear of all kinds” is
substantially different from hiking boots, mountaineering
boots, and sports footwear because it includes dress shoes
and casual shoes, and therefore extends the goods beyond
the description of goods in the previous registrations.
Therefore, we are not in a position to say that there would
be no likelihood of confusion by the registration of
applicant’s mark for these additional types of footwear
despite applicant’s ownership of the prior ALPINA
registrations.
Serial No. 79015585
23
F. Balancing the factors.
On the one hand, applicant’s mark and the mark in the
cited registration are similar, they are used on related
products and those products move in the same channels of
trade and are sold to the same customers. On the other
hand, applicant asserted that despite over twenty years of
concurrent use and registration, there have been no
reported instances of confusion, and applicant is the owner
of three ALPINA registrations for hiking boots,
mountaineering boots, and sports footwear. We readily
admit that it is troublesome to refuse registration when
applicant already owns registrations for similar marks for
related goods. However, as discussed above, the expansion
of applicant’s description of goods to encompass “footwear
of all kinds” removed the penumbra of protection, if any,
the prior registrations may have provided applicant. With
respect to applicant’s argument that there have been no
reported instances of actual confusion, applicant has not
made a sufficiently compelling case to persuade us to
forego the general rule that the absence of actual
confusion in an ex parte proceeding is entitled to little
probative value. Accordingly, we find that applicant’s
mark ALPINA and design, when applied to “footwear of all
kinds, including sports footwear,” so resembles L’ALPINA
Serial No. 79015585
24
and Design for “men’s and women’s cardigans, pullovers,
shirts, caps, berets, gloves, socks, stockings, underwear,
stretch suits and scarves” as to be likely to cause
confusion.
Decision: The refusal to register is affirmed and
registration to applicant is refused.