Antonio Sanchez

Trademark Trial and Appeal Board

Dec 28, 1999

No. 75306107 (T.T.A.B. Dec. 28, 1999)

Paper No. 10
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 28, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Antonio Sanchez
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Serial No. 75/306,107
_______
Kit M. Stetina of Stetina Brunda Garred & Brucker for Antonio
Sanchez.
Rudy R. Singleton, Trademark Examining Attorney, Law Office 109
(Ronald Sussman, Managing Attorney).
_______
Before Quinn, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by Antonio Sanchez to
register the mark "PAOLO DE MARCO" and design, as shown below,
for "leather apparel, namely shoes".1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that

1 Ser. No. 75/306,107, filed on June 10, 1997, which alleges dates of
first use of December 1993. The name "PAOLO DE MARCO" does not
identify a particular living individual.
Ser. No. 75/306,107
2
applicant’s mark, when applied to his goods, so resembles the
mark "DE MARCO CREATIONS" and design, as reproduced below,
which is registered for "men’s and boys’ neckties and hosiery,"2
as to be likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed,3 but
an oral hearing was not requested. We affirm the refusal to
register.
Turning first to consideration of the respective goods,
applicant concedes in his reply brief that he "cannot deny the
potential relatedness between shoes and hosiery in that both
items are produced for the feet." Nevertheless, and while
further acknowledging the absence of any restrictions with
respect to the goods listed in registrant’s registration,
applicant urges that men’s and boys’ neckties and hosiery "are
likely to be sold through retail department stores, women’s
fashion stores and the like." Leather shoes, applicant

2 Reg. No. 827,195, issued on April 4, 1967, which sets forth dates of
first use of December 1, 1961; renewed. The word "CREATIONS" is
disclaimed.
3 While the Examining Attorney, contending that a "mere listing of
third-party registration is insufficient to make them of record," has
for the first time objected in his brief to various third-party
registrations referred to by applicant during the prosecution of the
application, such objection has not only been waived by the failure to
so advise applicant in a timely manner, but the Examining Attorney in
any event treated the information in his final refusal as forming part
of the record. Accordingly, we have considered the information
pertaining to third-party registrations to be of record for whatever
probative value it may have.
Ser. No. 75/306,107
3
maintains, on the other hand "are likely to be sold in shoe
stores or segregated sections of department stores," thereby
dictating a finding of no likelihood of confusion.
We admit that there is no per se rule that all items of
wearing apparel are considered to be related for purposes of
assessing whether a likelihood of confusion exists. Each case,
instead, must be decided on its own particular facts and
circumstances. See, e.g., In re Shoe Works Inc., 6 USPQ2d 1890,
1891 (TTAB 1988) ["PALM BAY" and design for women’s shoes sold
solely through producers’s own retail shoe store outlets not
likely to cause confusion with "PALM BAY" for men’s, women’s and
children’s shorts and pants] and In re British Bulldog, Ltd., 224
USPQ 854, 855-56 (TTAB 1984) ["PLAYERS" for men’s underwear not
likely to cause confusion with "PLAYER’S" for shoes].
However, we note that in instances involving both items
of footwear and clothing worn as outerwear, such goods have
generally been found to be so closely related that their sale
under the same or substantially similar marks would be likely to
cause confusion. See, e.g., In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991) ["ESSENTIALS" for women’s pants, blouses,
shorts and jackets versus "ESSENTIALS" for women’s shoes]; In re
Pix of America, Inc., 225 USPQ 691, 692 (TTAB 1985) ["NEWPORT"
for outer shirts versus "NEWPORTS" for women’s shoes]; In re
Alfred Dunhill Ltd., 224 USPQ 501, 504 (TTAB 1984) ["DUNHILL" for
men’s hosiery v. "DUNHILL" for shoes]; In re Kangaroos U.S.A.,
223 USPQ 1025, 1026 (TTAB 1984) ["BOOMERANG" and design for men’s

Ser. No. 75/306,107
4
shirts versus "BOOMERANG" for athletic shoes]; In re Tender
Tootsies Ltd., 185 USPQ 627, 629 (TTAB 1975) ["TENDER TOOTSIES"
for women’s and children’s shoes and slippers v. "TOOTSIE" for
ladies’ nylon hosiery]; B. Rich’s Sons, Inc. v. Frieda Originals,
Inc., 176 USPQ 284, 285 (TTAB 1972) ["RICH’S CHEVY CHASERS" for
shoes versus "FRIEDA’S CHEVY CHASE ORIGINALS" for women’s
knitwear, namely, dresses, suits, skirts and blouses]; and U.S.
Shoe Corp. v. Oxford Industries, Inc., 165 USPQ 86, 87 (TTAB
1970) ["COBBIES" for shoes versus "COBBIES BY COS COB" for
women’s and girls’ shirt-shifts].
Furthermore, as correctly pointed out by the Examining
Attorney, neither applicant’s nor registrant’s goods contains any
limitation as to their channels of trade or classes of
purchasers. It must therefore be presumed that the respective
goods encompass all goods of the types described, that they
travel in all normal channels of trade for such goods and that
they are available to all potential customers. See, e.g., In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). The Examining Attorney,
in addition, has made of record as support for his position over
25 use-based third-party registrations for marks which, in each
instance, are registered for hosiery and/or socks, on the one
hand, and shoes on the other. Moreover, at least seven of such
registrations also list ties or neckties. Although such
registrations are not evidence that the different marks shown
therein are in use or that the public is familiar with them, they
nevertheless have some probative value to the extent that they
serve to suggest that the goods listed therein are of a kind
Ser. No. 75/306,107
5
which may emanate from a single source. See, e.g., In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at
n. 6.
In view thereof, and in light of well settled
authority, we concur with the Examining Attorney that applicant’s
leather shoes, including those for men and boys, and registrant’s
hosiery and neckties for men and boys are closely related goods
which would be sold through the same channels of trade to the
identical classes of purchasers. Confusion as to source or
sponsorship thereof would plainly be likely to occur if such
goods were to be sold under the same or substantially similar
marks.
Turning, then, to consideration of the marks at issue,
applicant argues in his initial brief that:
Registrant’s mark consists of the
stylized words "de Marco", with the fanciful
design of the "M" surrounding the word
"CREATTIONS" in an elliptical format. As
will be readily apparent, the prominence of
the term "CREATIONS" within the ellipse
stands out in such mark, where such term
appears to be of equal importance with the
term "[d]e Marco", which appears in a
scripted font. However, Appellant’s mark is
for the block letters "PAOLO DE MARCO",
combined with its fanciful design. Due to
the block lettering, the presence of the
first word "PAOLO", as well as Appellant’s
design, Appellant’s mark has an entirely
different appearance to consumers. Due to
these differences, as well as the additional
term "CREATIONS" in Registrant’s mark, the
consuming public will be left with a
different commercial impression of these
marks. In the same manner, the sound and
connotation of the respective marks is
substantially different, and consumers are
Ser. No. 75/306,107
6
not likely to believe that goods bearing
these marks emanate from a common source of
origin. In view of this fact, and because
conflicting composite marks should be taken
as a whole rather than broken into component
parts, Registrant’s mark has a very different
overall impression upon prospective buyers
than does Appellant’s mark. ....
Furthermore, although third-party registrations are not
evidence that the marks which are the subjects thereof are in use
and that consumers have learned to distinguish such marks on the
basis of the differences therein,4 applicant asserts in his reply
brief that:
Because there are substantial trademark
registrations on the Principal Register ...
which contain the term "MARCO" for wearing
apparel items, which have been previously
cited in the record (i.e., U.S. Registration
No. 1,648,889 for the mark MONDO DI MARCO,
U.S. Registration No. 2,075,382 for the mark
SALVATORE I MARCO and U.S. Registration No.
771,924 for the mark MARCO DI ROMA), the
existence of such third-party registrations
in [sic] indicative of Registrant’s non-
exclusive right to use the term "MARCO" for
wearing apparel. Given the substantial
differences between Registrant’s and
Appellant’s mark[s], including the presence
of Appellant’s "PAOLO" in its [sic] mark and
the fanciful fleur-de-lis design, Appellant
maintains that there can be no likelihood of
confusion between these respective marks.
....
While applicant is correct that the respective marks
must be compared in their entireties, it is nevertheless the case
that, in articulating reasons for reaching a conclusion on the
issue of likelihood of confusion, "there is nothing improper in

4 See, e.g., In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB
1983).
Ser. No. 75/306,107
7
stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided [that] the
ultimate conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.3d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, "that a particular
feature is descriptive or generic with respect to the involved
goods or services is one commonly accepted rationale for giving
less weight to a portion of a mark ...." 224 USPQ at 751.
Here, not only is the disclaimed term "CREATIONS" in
registrant’s "DE MARCO CREATIONS" and design mark merely
descriptive of its goods, and thus the dominant and principal
source-indicative element of such mark is the fanciful term "DE
MARCO," but as the Examining Attorney points out in his brief,
"the disclaimed ’CREATIONS’ term appears below the ’DE MARCO’
term and in a smaller font," such that "[t]he larger font "DE
MARCO’ term clearly dominates the mark." As the Examining
Attorney also persuasively notes, "none of the third-party
registrations include the ’DE MARCO’ term of the registered mark"
as does applicant’s "PAOLO DE MARCO" and design mark.
Additionally, we observe that overall it is the literal portions
of applicant’s mark, rather than the subordinate design feature,
which, like registrant’s mark, would be regarded by customers and
prospective purchasers as the principal source-signifying
portions of the particular marks since it is the literal elements
thereof which typically would be utilized when such consumers ask
about or call for the associated goods. See, e.g., In re
Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).
Ser. No. 75/306,107
8
In consequence thereof, and while differences
admittedly exist between the respective marks when viewed on the
basis of a side-by-side comparison,5 we agree with the Examining
Attorney that, when considered in their entireties, applicant’s
"PAOLO DE MARCO" and design mark is substantially similar in
sound, appearance, connotation and commercial impression to
registrant’s "DE MARCO CREATIONS" and design mark. Moreover,
even if consumers were to notice the differences in the
respective marks, it is still the case that, in light of the
substantial overall similarities therein, customers could readily
believe for example that, due to the shared fanciful term "DE
MARCO," the leather shoes offered by applicant under his "PAOLO
DE MARCO" and design mark represent a new or expanded line of
wearing apparel from the same source or sponsor as the producer
of the men’s and boys’ neckties and hosiery marketed by
registrant under its "DE MARCO CREATIONS" and design mark.
Finally, applicant makes much of the assertion in his
initial brief that "there is no evidence of any actual instances
of confusion, despite nearly five years of concurrent use of
Appellant’s mark and Registrant’s mark," and that such is

5 Such a comparison, however, is not the proper test to be used in
determining the issue of likelihood of confusion inasmuch as it is not
the ordinary way that customers will be exposed to the marks.
Instead, it is the similarity of the general overall commercial
impression engendered by the marks which must determine, due to the
fallibility of memory and the concomitant lack of perfect recall,
whether confusion as to source or sponsorship is likely. The proper
emphasis is accordingly on the recollection of the average purchaser,
who normally retains a general rather than a specific impression of
marks. See, e.g., Envirotech Corp. v. Solaron Corp., 211 USPQ 724,
733 (TTAB 1981); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975); and Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973).
Ser. No. 75/306,107
9
therefore "probative that there exists no likelihood of confusion
between the respective marks." The Examining Attorney, in his
brief, accurately points out, however, that "[i]n this instance
no such evidence exists." Specifically, there is no affidavit or
declaration from applicant or anyone else associated with
applicant who has first-hand knowledge of applicant’s sales and
advertising of his goods under his mark, nor does the record
reflect what registrant’s experience has been. Absent evidence
demonstrating appreciable and continuous use of his mark for a
significant period of time in the same markets as those actively
served by registrant, the length of time during and conditions
under when there has been contemporaneous use of the respective
marks without any reported incidents of actual confusion is
simply not a meaningful factor. See, e.g., Gillette Canada Inc.
v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
We accordingly conclude that purchasers and prospective
customers, familiar with registrant’s "DE MARCO CREATIONS" and
design mark for men’s and boys’ neckties and hosiery, could
reasonably assume, upon encountering applicant’s substantially
similar "PAOLO DE MARCO" and design mark for leather apparel,
namely shoes, that such closely related items of wearing apparel
emanate from, or are sponsored by or affiliated with, the same
source.
Ser. No. 75/306,107
10
Decision: The refusal under Section 2(d) is affirmed.
T. J. Quinn
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board