Anita Dr. Helbig GmbH

Trademark Trial and Appeal Board

Aug 6, 2003

No. 76148491 (T.T.A.B. Aug. 6, 2003)

Mailed: August 6, 2003
Paper No. 14
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Anita Dr. Helbig GmbH
___________
Serial No. 76/148,491
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Mark P. Stone, Esq. for Anita Dr. Helbig GmbH.
Daniel F. Capshaw, Trademark Examining Attorney, Law Office
109 (Leslie Bishop, Managing Attorney).
____________
Before Walters, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Anita Dr. Helbig GmbH has filed an application to
register the stylized mark “Amadea”1 on the Principal

1 In response to a query by the Examining Attorney, applicant stated
that its mark, appearing in the drawing in upper and lower case letters
in a type font very similar to what is shown above, is a stylized mark
(applicant response of September 27, 2001). However, the USPTO records
have not been changed to show that the application contains a special
form drawing rather than a typed drawing (See Trademark Rule 2.52(a)).
If applicant ultimately prevails in this appeal, the Examining Attorney
is directed to ensure that the USPTO records are corrected before this
mark publishes for opposition.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76/148,491
2
Register for “women’s clothing, namely, bras, panties and
corselets,” in International Class 25.2
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the mark AMADEO, previously registered for
“ladies, men’s and children’s shoes,”3 that, if used on or
in connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
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 likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). 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

2 Serial No. 76/148,491, filed October 16, 2000, based on German
Registration No. 300 33 647.0 under Section 44(e), 15 U.S.C. §1126(e),
with a claim of priority under Section 44(d), 15 U.S.C. §1126(d), based
on the underlying German application filed April 28, 2000.
3 Registration No. 809,581 issued June 6, 1966, to Miami Shoe Factory,
Inc., in International Class 25. [Renewed for a period of twenty years
from June 7, 1986.]
Serial No. 76/148,491
3
the marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and
the cases cited therein.
The Examining Attorney contends that the marks are
“nearly identical” because “the marks share all lettering
but for a final vowel, [thus] creat[ing] a strong similarity
in sound”; and that the stylization of applicant’s mark is
minimal and does not serve to distinguish the marks.
Regarding the goods, the Examining Attorney contends that
the goods are related, citing several cases in which a
likelihood of confusion was found for identical marks for
various items of clothing4; and that the evidence of
excerpts of articles retrieved from the LEXIS/NEXIS database
includes many references to ladies’ shoes and ladies
undergarments originating from the same retailer,5 thus,
establishing that the channels of trade for these products
are the same. While these excerpts do not indicate whether
these types of products are marketed under the same mark,
the Examining Attorney also submitted copies of third-party
registrations wherein the same mark is registered for
numerous clothing items, including shoes and underwear.

4 The most relevant case cited is Cambridge Rubber Co. v. Cluett,
Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (CCPA 1961) (“WINTER
CARNIVAL” for women’s boots as well as men’s and boys’ underwear).
Serial No. 76/148,491
4
Applicant contends that the marks are not identical
and, given the differences in the goods, the marks are
sufficiently different to avoid likelihood of confusion; and
that the different vowels at the ends of the two marks
create different commercial impressions. Applicant cites
numerous cases involving various clothing items and shoes
wherein no likelihood of confusion was found.6 Applicant
contends, further, that, while shoes and underwear may be
sold in the same large department stores, such items will be
sold in different departments or sections; that the purchase
of women’s undergarments is of a personal or intimate nature
and, therefore, the purchasers are discriminating and
careful.
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. 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
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to

5 There is no indication in these articles that the respective goods,
while sold in the same stores, are marketed under the same trademarks.
6 The most relevant case is In re British Bulldog, Ltd., 224 USPQ 854
(TTAB 1984) (no likelihood of confusion for PLAYERS for shoes as well as
men’s underwear because PLAYERS has different connotation with respect
to the different goods).
Serial No. 76/148,491
5
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).
We agree with applicant that the marks are not
identical, but it is clear that the only difference between
the two marks is the final letter of each, which, in both
marks is a vowel and, if pronounced softly, would sound very
similar. There is no evidence indicating that either mark
is other than arbitrary in connotation. The marks are
sufficiently similar in overall commercial impression that,
if viewed in time or place apart from one another and in
connection with similar or related goods, confusion as to
source is likely.
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Serial No. 76/148,491
6
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein.
Both applicant and the Examining Attorney have cited
numerous cases finding both likelihood of confusion or no
likelihood of confusion for similar marks for various
clothing and footwear products. This demonstrates the well
established principles that each case must be decided on its
own specific set of facts and that there is no per se rule
for likelihood of confusion with respect to clothing and
footwear items.
The third-party registrations of record indicate that
numerous parties have registered the same mark for wide
Serial No. 76/148,491
7
varieties of clothing, including footwear and
undergarments.7
The excerpted articles support the fact that retailers,
whether stores, catalog sales, or Internet sales sites,
often sell a wide variety of all types of clothing items.
The majority of the excerpted articles refer to single
entities, largely retail establishments, selling various
types of clothing, including undergarments and footwear.
The following are two examples:
In an effort to sell more athletic shoes and jog
bras in an increasingly competitive marketplace,
the maker of Air Jordans [Nike] said it would soon
barrage the market with high- and moderate-priced
items for sports-minded women. [Daily News (New
York) August 23, 2000.]
Berkshire Hathaway Inc. owns subsidiaries that
sell jewelry, boots and shoes. Now, add to that
list underwear. … Berkshire … announced late
Thursday its agreement to purchase the apparel
operations of troubled Fruit of the Loom for $835
million in cash. [Omaha World-Herald Company
November 2, 2001.]
Neither article is explicit as to what trademarks are used
on the various items. However, we infer from the first
excerpt that the NIKE mark will be used on both athletic
shoes and sports bras; and we equally infer from the second
excerpt that Berkshire Hathaway, through various
subsidiaries, will be selling jewelry, boots, shoes and

7 For example, the following registrations are among 14 registrations in
this record for various items of clothing including “shoes” and
“underwear”: Reg. No. 2,475,698 for DU BLUE; Reg. No.2,504,070 for
MELANO; Reg. No.2,498,301 for DARASJA JEAN COLLECTION; and Reg. No.
2,520,105 for OCEAN TRAVELERS.
Serial No. 76/148,491
8
apparel. Thus, we find this evidence, along with the third-
party registrations, sufficient to establish a clear
connection between the specific goods involved in this case.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, “Amadea,” and registrant’s mark, AMADEO, their
contemporaneous use on the related goods involved in this
case is likely to cause confusion as to the source or
sponsorship of such goods.
Finally, it is well established that one who adopts a
mark similar to the mark of another for the same or closely
related goods or services does so at his own peril, and any
doubt as to likelihood of confusion must be resolved against
the newcomer and in favor of the prior user or registrant.
See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d
1460, 18 USPQ2d 1889 (Fed. Cir. 1991); In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed Cir. 1988);
and W.R. Grace & Co. v. Herbert J. Meyer Industries, Inc.,
190 USPQ 308 (TTAB 1976).
Decision: The refusal under Section 2(d) of the Act is
affirmed.