Baurch Zelikowics

Trademark Trial and Appeal Board

May 2, 1997

EX (T.T.A.B. May. 2, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB May 2, 1997
Paper No. 9
EWH/KTP
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Baurch Zelikowics
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Serial No. 74/590,765
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Harold L. Novick of Larson and Taylor for Baurch Zelikowics.
Charles T.J. Weigell, Trademark Examining Attorney, Law
Office 109 (Deborah Cohn, Managing Attorney).
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Before Rice, Seeherman and Hanak, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Baurch Zelikowics (applicant) seeks to register REPLEX
in typed capital letters for "shoes; shoe uppers; shoe
heels; shoe uppers removeably attachable to shoe heels; shoe
heels removeably attachable to shoe uppers; and parts
therefor." The intent-to-use application was filed on
October 26, 1994.
Ser No. 74/590,765
2
The Examining Attorney refused registration pursuant to
Section 2(d) of the Lanham Trademark Act on the basis that
applicant's mark, as applied to applicant's goods, is likely
to cause confusion with the mark REPLEX previously
registered in the form shown below for "woven fabrics used
in the manufacturing of clothing." Registration No.
1,780,338.

When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods and the
similarities of the marks. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
("The fundamental inquiry mandated by Section 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.").
In this case, the marks are virtually identical.
Hence, the issue of likelihood of confusion turns primarily
Ser No. 74/590,765
3
upon the "differences in the essential characteristics of
the goods."
The Examining Attorney contends that "there is an
admitted ambiguity as to the scope of identification of
goods recited in the cited registration." (Examining
Attorney's brief page 5). Continuing, the Examining
Attorney argues "that any ambiguity must be resolved in
favor of the registrant and against the applicant."
(Examining Attorney's brief page 5). The Examining Attorney
then contends that the term "clothing" found in registrant's
identification of goods is arguably broad enough to
encompass shoes. (Examining Attorney's brief page 5).
Thus, the Examining Attorney is of the belief that
registrant's goods (woven fabrics used in the manufacturing
of clothing) and applicant's goods (essentially shoes and
parts therefor) are clearly related because "a broad reading
of the term 'clothing' [in registrant's identification of
goods] to encompass other 'covering' items for the body such
as shoes is duly appropriate." (Examining Attorney's brief
pages 7-8).
The reasoning of the Examining Attorney is defective in
at least three respects. First, the registrant's
identification of goods is simply not ambiguous. The phrase
"woven fabrics used in the manufacturing of clothing" is
easily understood.
Second, clothing and shoes are not the same, and there
is no justification for reading the term "clothing" to
Ser No. 74/590,765
4
encompass shoes. While it is true that clothing and shoes
are obviously related, by the same token "they are
distinctly different." In re British Bulldog, Ltd., 224
USPQ 854, 856 (TTAB 1984). Indeed, the Trademark Manual of
Examining Procedure, in explaining Class 25, makes separate
mention of "clothing" on the one hand and "footwear" on the
other hand. TMEP Section 1401.02(a).
Third, even assuming for the sake of argument that
registrant's identification of goods is ambiguous (which it
is not), the Examining Attorney's contention "that any
ambiguity must be resolved in favor of the registrant and
against the applicant" (Examining Attorney's brief page 5)
is simply wrong. In re Trackmobile Inc., 15 USPQ2d 1152,
1154 (TTAB 1990); In re Protection Controls, Inc., 185 USPQ
692, 694 (TTAB 1975).
While the marks in question are virtually identical, we
are confronted with a situation where applicant's goods are
not one step removed from registrant's goods, but instead
are at least two steps removed from registrant's goods. The
relationship between applicant's goods and registrant's
goods is as follows: shoes and parts therefor; clothing;
woven fabrics used in the manufacturing of clothing. We
find that the use of the virtually identical mark on shoes
and parts therefor (on the one hand) and on woven fabrics
used in the manufacturing of clothing (on the other hand) is
not likely to result in confusion.
Ser No. 74/590,765
5
Decision: The refusal to register is reversed.
J. E. Rice
E. J. Seeherman
E. W. Hanak
Administrative Trademark
Judges, Trademark Trial
and Appeal Board