Beth June Shaw

Trademark Trial and Appeal Board

May 14, 2013

No. 77850783 (T.T.A.B. May. 14, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Shaw
_____

Serial No. 77850783
_____

Thomas I. Rozsa of Rozsa Law Group LC for Beth June Shaw.

Brian Pino, Trademark Examining Attorney, Law Office 114 (K. Margaret Le,
Managing Attorney).
_____

Before Bucher, Bergsman and Hightower, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Beth June Shaw (“applicant”) filed an intent-to-use application to register the
mark FORTUNE T’S, in standard character form, for “t-shirts and shirts,” in
International Class 25. Applicant disclaimed the exclusive right to use “T’S.”
The Trademark Examining Attorney refused to register applicant’s mark under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that
applicant’s mark so resembles the mark FORTUNE BRANDS, in typed drawing form,
Serial No. 77850783

2

for “clothing, namely, T-shirts and golf shirts,” in Class 25, as to be likely to cause
confusion.1
Preliminary Issue
Applicant, in her February 26, 2010 response to an Office action, listed 17
registrations and applications whose marks include the word “Fortune” used in
connection with clothing for the purpose of proving that “Fortune” is a weak term
when used in connection with clothing.2 Applicant did not attach copies of the
registrations. The Trademark Trial and Appeal Board does not take judicial notice of
registrations, and the submission of a list of registrations does not make these
registrations part of the record. In re 1st USA Realty Prof'ls, Inc., 84 USPQ2d 1581,
1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974); TBMP
§ 1208.02 (3rd ed. rev 2012). When, as here, the applicant's response includes
improper evidence of third-party registrations, the examining attorney must object to
the evidence in the first Office action following the response. Otherwise the Board
may consider the objection to be waived. See In re Houston, 101 USPQ2d 1534, 1536
(TTAB 2012) (finding that the examining attorney's failure to advise applicant of the
insufficiency of the list of registrations when it was proffered during examination
constituted a waiver of any objection to consideration of that list); In re 1st USA Realty
Prof'ls, 84 USPQ2d at 1583 (allowing evidence of a list of third-party registrations

1 Registration No. 2203167 issued November 10, 1998; renewed.
2 Pending applications are incompetent to prove anything other than the fact that the
applications were filed. See Olin Corp. v. Hydrotreat, Inc., 210 USPQ 62, 65 n.5 (TTAB 1981)
(“Introduction of the record of a pending application is competent to prove only the filing
thereof.”); Merritt Foods Co. v. Americana Submarine, 209 USPQ 591, 594 (TTAB 1980).
Accordingly, we will not give pending applications any further consideration.
Serial No. 77850783

3

because the examining attorney did not advise applicant of the insufficiency of the list
while there was still time to correct the mistake); In re Broyhill Furniture Indus., Inc.,
60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (finding examining attorney's objection to a
listing of third-party registrations waived because it was not raised in the Office action
immediately following applicant's response in which applicant’s reliance on the listing
as evidence was indicated). If the applicant files an appeal, the examining attorney
should continue the objection to the evidence in his or her appeal brief. The
Trademark Examining Attorney did not object to the list of registrations, nor did the
Trademark Examining Attorney instruct applicant as to how to the properly introduce
the registrations into the record.
In her appeal brief, applicant attached copies of the 17 previously referenced
registrations along with five additional registrations to prove that “Fortune” is a weak
term when used in connection with clothing. In his appeal brief, the Trademark
Examining Attorney objected only to the copies of the five additional registrations as
being untimely. Trademark Rule 2.142(d) provides that the record in the application
should be complete prior to the filing of an appeal and that the Board will not
ordinarily consider evidence filed after the appeal is filed. Because the five additional
registrations are cumulative, we will consider applicant’s late-filed evidence.
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., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315
Serial No. 77850783

4

F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by §2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks”). These factors, and any other relevant du
Pont factors in the proceeding now before us, will be considered in this decision.
A. The similarity or dissimilarity or nature of the goods, established likely-to-
continue channels of trade and classes of consumers.
The description of goods in the application and the cited registration both
include “t-shirts” and applicant’s “shirts” are broad enough to include registrant’s “golf
shirts.” Accordingly, the goods are identical.
Because the goods described in the application and the cited registration are
identical, we must presume that the channels of trade and classes of purchasers are
the same. See American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey,
31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade, and be sold to the same
class of purchasers.”). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade
and classes of consumers, the Board was entitled to rely on this legal presumption in
determining likelihood of confusion).
Serial No. 77850783

5

B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, meaning and commercial impression.
We turn now to the du Pont likelihood of confusion factor focusing 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., 177
USPQ at 567. In a particular case, any one of these means of comparison may be
critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In
comparing the marks, we are mindful that where, as here, the goods are identical, the
degree of similarity necessary to find likelihood of confusion need not be as great as
where there is a recognizable disparity between the goods. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-
Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB
2007).
Moreover, 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 USPQ2d 1735,
1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
Applicant’s mark is FORTUNE T’S and the cited registration is FORTUNE
BRANDS. The similarity or dissimilarity of the marks is determined based on the
Serial No. 77850783

6

marks in their entireties. The analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire marks,
not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). See also Franklin Mint Corp. V. Master Mfg. Co., 667 F.2d 1005,
212 USPQ 23, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion”). On the other hand, different features may be analyzed to
determine whether the marks are similar. Price Candy Company v. Gold Medal
Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re National Data Corp., 224 USPQ at
751.
In this case, the dominant part of both marks is the word “Fortune.” The letters
“T’S” in applicant’s mark are descriptive, if not generic, when used in connection with
t-shirts. Likewise, the term “Brands” in the registered mark has no trademark
significance as it means “a class of goods identified by name as the product of single
firm or manufacturer: MAKE.”3 (Emphasis in the original). It is well-settled that
disclaimed, descriptive matter may have less significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,

3 Merriam-Webster (m-w.com). The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in
printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377
(TTAB 2006).
Serial No. 77850783

7

1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 224 USPQ at 752
(“Regarding descriptive terms, this court has noted that the descriptive component of a
mark may be given little weight in reaching a conclusion on the likelihood of
confusion”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”).
The significance of the word “Fortune” as the dominant element of both marks
is further reinforced by its location as the first part of each mark. See Presto Products
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the
first part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered”). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is
the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first
word in the mark and the first word to appear on the label); Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(upon encountering the marks, consumers will first notice the identical lead word).
Thus, the dominant element in both marks, the word “Fortune,” is identical and
that word is followed by highly descriptive, if not generic terms, “T’S” and “Brands,”
that have little trademark significance.
Applicant argues, in essence, that FORTUNE T’S is a weak mark entitled to
narrow scope of protection or exclusivity of use as evidenced by “23 registrations
and/pending applications which incorporate the term FORTUNE in the garment
Serial No. 77850783

8

class.”4 While the third-party registrations are evidence that FORTUNE marks have
been previously registered, the record includes no evidence regarding the extent of
third-party uses and, therefore, the probative value of the registrations is minimal.
The third-party registrations introduced by applicant are not evidence that
those marks have been used at all, let alone used so extensively that consumers have
become sufficiently conditioned by their usage that they can distinguish between such
marks on the bases of minute differences. The probative value of third-party
trademarks depends entirely upon their usage. E.g., Scarves by Vera, Inc. v. Todo
Imports, Ltd., 544 F.2d 1167, 192 USPQ 289, 294 (2d Cir. 1976) (“The significance of
third-party trademarks depends wholly upon their usage. Defendant introduced no
evidence that these trademarks were actually used by third parties, that they were
well promoted or that they were recognized by consumers.”). As the Court of Customs
and Patent Appeals, the predecessor to the Court of Appeals for the Federal Circuit,
our primary reviewing court, pointed out in Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376
F.2d 324, 153 USPQ 406, 407 (C.C.P.A. 1967), “the existence of these registrations is
not evidence of what happens in the market place or that customers are familiar with
their use.” Where, as here, the “record includes no evidence about the extent of [third-
party] uses … [t]he probative value of this evidence is thus minimal.” See also Olde
Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir.
1992) (“As to strength of a mark, however, registration evidence may not be given any
weight”).

4 Applicant’s Brief, p. 2. .
Serial No. 77850783

9

Nevertheless, third-party registrations may be used in the manner of a
dictionary to show that a mark or portion of a mark is descriptive or suggestive of the
goods. A review of the registrations and the dictionary meanings of the word
“Fortune”5 fails to provide any insight as to why or how “Fortune” is descriptive or
suggestive of t-shirts or shirts and applicant does not provide any analysis other than
arguing that because the PTO has registered “numerous registrations which
incorporate the term FORTUNE and for which contain specific garments, shirts and t-
shirts” and “that there is absolutely and totally no exclusivity to the phrase
FORTUNE when used in conjunction with garments.”6
“Whether the public has been so conditioned [to third-party use] turns on
whether it has been actually exposed to the similar third party [sic] marks in the
marketplace, and on the extent and intensity of that exposure.” In re Clorox Co., 578
F.2d 305, 198 USPQ 337, 343 (CCPA 1978). See also Tiffany & Co. v. Classic Motor
Carriages, Inc., 10 USPQ2d 1835, 1840-41 (TTAB 1989) (the probative value of third
party evidence depends on the extent to which the various names have been used and
the degree to which the public is aware of such use). What we can conclude from
applicant’s evidence is that FORTUNE is not a unique term in the field clothing.
Nevertheless, registrant’s mark FORTUNE BRANDS is registered and it is entitled to
the presumptions of Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b) (prima
facie evidence of registrant’s exclusive right to use the mark in commerce).

5 The word “fortune” is defined as “a hypothetical force or personified power that unpredictably
determines events and issues favorably or unfavorably … luck … destiny … fate” or “riches,
wealth.” Merriam-Webster (m-w.com).
6 Applicant’s Brief, pp. 8-9.
Serial No. 77850783

10

In view of the foregoing, we find that applicant’s mark FORTUNE T’S is similar
to the mark FORTUNE BRANDS in terms of appearance, sound, meaning and
commercial impression.
C. Balancing the factors.
Because the marks are similar, the goods are identical and the presumption
that the channels of trade and classes of consumers are the same, we find that
applicant’s mark FORTUNE T’S for “t-shirts and shirts” is likely to cause confusion
with the registered mark FORTUNE BRANDS for “clothing, namely, T-shirts and golf
shirts.”
Decision: The refusal to register is affirmed.