Arden Cravats, Inc.

Trademark Trial and Appeal Board

Sep 26, 2000

No. 75457263 (T.T.A.B. Sep. 26, 2000)

Paper No. 9
JQ
9/26/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Arden Cravats, Inc.
________
Serial No. 75/457,263
_______
F. Michael Sajovec of Myers Bigel Sibley & Sajovec for
applicant.
Douglas M. Lee, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Quinn and Hohein, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Arden Cravats, Inc.
to register the mark ARDEN CRAVATS (“CRAVATS” disclaimed)
for “ties.”1
The Trademark Examining Attorney has refused
registration on two bases. First, registration has been
refused under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to applicant’s

1 Application Serial No. 75/457,263, filed March 26, 1998,
alleging dates of first use of December 18, 1974.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/457,263
2
goods, so resembles the previously registered mark ARDEN
for “outer shirts” as to be likely to cause confusion.2
Second, registration has been refused under Section 2(e)(4)
on the ground that the applied-for mark is primarily merely
a surname.
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
LIKELIHOOD OF CONFUSION
Our 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. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first turn to consider the marks. Although we
stress that we have considered the marks in their
entireties, including the disclaimed portion, “there is
nothing improper in stating that, for rational reasons,

2 Registration No. 405,940, issued February 29, 1944; twice
renewed.
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3
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.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). For example, “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...” Id. at 751. In
this connection, “ARDEN” is clearly the dominant part of
applicant’s mark, with the disclaimed generic term
“CRAVATS” being relegated to a subordinate role because it
has no source-identifying function. The term “ARDEN” alone
would likely be used in calling for applicant’s goods.
This dominant portion is identical to the entirety of the
registered mark. In re Denisi, 225 USPQ 624 (TTAB
1985)[while not ignoring the caveat that marks must be
considered in their entireties when evaluating the chances
of their being confused in the marketplace, where a
newcomer has appropriated the entire mark of a registrant,
and has added to it a non-distinctive term, the marks are
generally considered to be confusingly similar]. In
comparing the marks, we further note that the record is
devoid of evidence of any third-party uses or registrations
of the same or similar marks in the clothing field.
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With respect to the goods, it should be noted
that it is not necessary that the goods be identical or
even competitive in nature in order to support a finding of
likelihood of confusion. It is sufficient that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances that would give rise, because of the
marks used in connection therewith, to the mistaken belief
that the goods originate from or are in some way associated
with the same source. In re International Telephone and
Telegraph Corp., 197 USPQ 910 (TTAB 1978). Moreover, the
Board has stated that the degree of similarity in the goods
need not be as great where the marks are essentially
identical. Warnaco Inc. v. Adventure Knits, Inc., 210 USPQ
307, 315 (TTAB 1981).
Notwithstanding specific differences between shirts
and ties, we find them to be sufficiently related that,
when sold under substantially identical marks, purchasers
are likely to mistakenly assume that applicant’s mark
identifies a line of ties emanating from registrant.
Shirts and ties form an important fashion combination in
men’s wearing apparel, a fact shown by the way they are
marketed in the catalogs relied upon by the Examining
Attorney. Such items are complementary, and because they
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will be worn together, they are often purchased together
during the same shopping trip.
Shirts and ties are bought by the same classes of
purchasers, that is, members of the general public. There
is nothing in the record to support applicant’s assertion
that its goods and those of registrant are not bought on
impulse, but rather only after some consideration. Given
that the source-identifying portion of applicant’s mark is
identical to the cited mark, even careful purchasers are
likely to view the trademarks as essentially identical, and
to indicate origin with a single source. We would also
point out that inasmuch as the identifications of goods are
not limited, they are broad enough to cover inexpensive
shirts and ties.
In finding that applicant’s ties are related to
registrant’s outer shirts, we have considered the several
third-party registrations based on use which the Examining
Attorney has submitted. The registrations show marks which
are registered for both shirts and ties. Although these
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, they
nevertheless have probative value to the extent that they
serve to suggest that the goods listed therein, including
shirts and ties, are of a kind which may emanate from a
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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 at n. 6 (TTAB 1988).
The absence of evidence of actual confusion does not
mandate a different result in this case. Given the lack of
specifics bearing on the extent of use of the involved
marks, we are at a great disadvantage in assessing whether
there has been a meaningful opportunity for confusion to
occur in the marketplace. In any event, the test in
deciding this appeal is likelihood of confusion.
We conclude that consumers familiar with registrant’s
outer shirts sold under its mark ARDEN would be likely to
believe, upon encountering applicant’s mark ARDEN CRAVATS
for ties, that the goods originated with or are somehow
associated with or sponsored by the same entity.
PRIMARILY MERELY A SURNAME
Whether a mark is primarily merely a surname depends
upon whether its primary significance to the purchasing
public is that of a surname. In re Hutchinson Technology,
Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988). The
Office has the burden of establishing a prima facie case
that a term is primarily merely a surname. In re
Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652
(Fed. Cir. 1985). Provided that the Examining Attorney
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establishes a prima facie case, the burden shifts to the
applicant to rebut the showing made by the Examining
Attorney. In re Harris-Intertype Corp., 518 F.2d 629, 186
USPQ 238, 239-40 (CCPA 1975). The Board, in the past, has
taken into account various factual considerations in making
a determination whether a mark is proscribed by Section
2(e)(4). In re Benthin Management GmbH, 37 USPQ2d 1332
(TTAB 1995).
With respect to the surname significance of ARDEN, the
Examining Attorney has made of record a printout retrieved
from the PHONEDISC POWERFINDER USA ONE 1998 (4th ed.)
database. This evidence shows listings for over 900
individuals having the surname “Arden.” As stated in the
past, there is no minimum or “magic” number of directory
listings required to establish a prima facie case for
refusal of registration under Section 2(e)(4). In re
Cazes, 21 USPQ2d 1796 (TTAB 1991). Further, even uncommon
surnames are not registrable on the Principal Register. In
re Industrie Pirelli per Azioni, 9 USPQ2d 1564 (TTAB 1988),
aff’d unpublished opinion, No. 89-1231 (Fed. Cir. July 17,
1989).
Applicant contends that the term “ARDEN” has
significance other than as a surname. However, it was not
until the appeal brief when applicant, for the first time,
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pointed to the geographic area known as the Forest of Arden
which is the setting for Shakespeare’s play As You Like It.
In this connection, applicant points to a “famous
quotation” from the play which refers to the area as
“Arden.”
Applicant’s contentions do not overcome the Examining
Attorney’s prima facie case. Although we certainly
recognize the fame of Shakespeare and the fact that he
wrote the play As You Like It, there is no evidence of
record bearing on the extent of exposure among consumers
that the play is set in the Forest of Arden. Nor is there
any evidence that consumers in the United States would be
aware that there is a forest in England called “Arden.”
“Unless there is a readily recognized meaning for a term
apart from its surname significance, the fact that other
meanings for the term exist does not necessarily indicate
that the term would have a primary meaning to the
purchasing public other than that of its ordinary surname
significance.” In re Hamilton Pharmaceuticals Ltd., 27
USPQ2d 1939, 1942 (TTAB 1993).
We note that it does not appear that “Arden” is the
surname of anyone connected with applicant. Although we
have considered this factor, we view it to be less
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probative than the evidence relied upon by the Examining
Attorney.
Lastly, we find that “Arden” has the “look and feel”
of a surname. In re Sava Research Corp., 32 USPQ2d 1380,
1381 (TTAB 1994). In this connection, we take judicial
notice that “Arden” is the surname of the cosmetician
Elizabeth Arden. The Random House Dictionary of the
English Language (2nd ed. Unabridged 1987). Further, the
inclusion of the generic term “CRAVATS” in applicant’s mark
does not detract from the primary surname significance of
the mark. In re E. Martinoni Company, 189 USPQ 589 (TTAB
1975).
Because applicant has failed to sufficiently set forth
persuasive evidence or arguments to rebut the prima facie
showing by the Examining Attorney, we conclude that ARDEN
is primarily merely a surname under Section 2(e)(4) of the
Act.
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Decision: The refusals to register are affirmed.
E. J. Seeherman
T. J. Quinn
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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