Big Entertainment, Inc.

Trademark Trial and Appeal Board

Sep 30, 1998

No. 75009259 (T.T.A.B. Sep. 30, 1998)

Paper No. 12
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB SEPT 30, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Big Entertainment, Inc.
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Serial No. 75/009,259
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Edward H. Rosenthal and Lawrence R. Miller of Frankfurt,
Garbus, Klein & Seltz for applicant.
Charles T. J. Weigell, Trademark Examining Attorney, Law
Office 109 (Deborah S. Cohn, Managing Attorney).
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Before Simms, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Big Entertainment, Inc. has filed a trademark
application to register the mark ACORNA for “T-shirts,
sweatshirts, sweat pants, pants, shorts, tank tops, shirts,
vests, blouses, nightshirts, pajamas, boxer shorts, under
garments, infant wear, bathing suits, rain coats and rain
wear, bathrobes, aprons, jackets, scarves, sweaters, wrist
bands, head bands, bow ties, neck ties, belts, sneakers,
Serial No. 75/009,259
2
shoes, skirts, socks, hats, caps, masquerade costumes and
masks sold in connection therewith.”1
The Trademark Examining Attorney has finally refused
registration 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 shown below, previously registered for
“footwear made at least in part of leather or sheepskin,
namely boots, shoes and slippers,”2 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 the applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods. Federated

1 Serial No. 75/009,259, in International Class 25, filed October 23,
1995, based on a bona fide intention to use the mark in commerce.
2 Registration No. 1,442,169, issued June 9, 1987, to Acorn Products
Co., Inc., in International Class 25. [Sections 8 and 15 affidavits
accepted and acknowledged, respectively.]
Serial No. 75/009,259
3
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
Considering, first, the goods, we note that
registrant’s identified boots, shoes and slippers are
limited to products made at least in part of leather or
sheepskin. Applicant’s recitation of goods includes a wide
variety of clothing including “shoes”; and, as the entry
for “shoes” contains no limitations, it would encompass
registrant’s shoes. As such, applicant’s recited “shoes”
are legally identical to registrant’s recited shoes. The
fact that only one of the items identified in applicant’s
list of goods is identical to one of registrant’s goods is
sufficient to find that confusion would be likely if
applicant was to use a mark that is confusingly similar to
registrant’s mark.
Turning to the marks, we note that, in determining
likelihood of confusion, a lesser degree of similarity
between two parties’ marks is required when the marks are
applied to identical goods or services. HRL Associates,
Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989).
Further, as the Board stated in In re J.M. Originals, 6
USPQ2d 1393 (1987):
A finding of likelihood of confusion need not
necessarily be premised on a finding that
prospective purchasers would not be able to
Serial No. 75/009,259
4
distinguish the two marks when used on identical
or closely related goods. Even if prospective
purchasers could distinguish the two marks, a
finding of likelihood of confusion may
nevertheless be premised on a finding that these
prospective consumers would erroneously believe,
because of the similarities in the marks, that
goods bearing the two marks emanate from the
same, albeit perhaps anonymous, source.
Although the marks must be compared in their entireties,
there is nothing improper in giving more weight to a
particular portion of a mark if it would be remembered and
relied upon to identify the goods and/or services. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Thus, if a mark comprises both words and a design,
then the words are normally accorded greater weight because
the words are likely to make an impression upon purchasers
that would be remembered by them and would be used by
purchasers to request the goods and/or services. In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987);
and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ
461, 462 (TTAB 1985). See also: Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983).
In this case, registrant’s mark consists of the
word ACORN appearing above a simple design of an acorn
enclosed in a circle. The design of the acorn reinforces
the dominant impression of the word ACORN. Applicant’s
Serial No. 75/009,259
5
mark consists of the word ACORNA, which applicant describes
as “a fanciful word that does not exist in the English
language.” While the word ACORNA as a whole may be
“fanciful,” it is our view that the mark will be perceived
as the word ACORN with an “A” added at the end. Thus, we
conclude that the overall commercial impression of the two
marks is substantially similar. We note the general
principle that the test of likelihood of confusion is not
whether the marks can be distinguished when subjected to a
side-by-side comparison. The issue is whether the marks
create the same overall commercial impression. Visual
Information Institute, Inc. v. Vicon Industries Inc., 209
USPQ 179 (TTAB 1980). Due to the consuming public’s
fallibility of memory, the emphasis is on the recollection
of the average customer, who normally retains a general
rather than a specific impression of trademarks or service
marks. Spoons Restaurants, Inc. v. Morrison, Inc., 23
USPQ2d 1735 (TTAB 1991), aff’d. No. 92-1086 (Fed. Cir. June
5, 1992); and In re Steury Corporation, 189 USPQ 353 (TTAB
1975).
In this case, we conclude that in view of the
substantial similarity in the commercial impressions of
applicant’s mark, ACORNA, and registrant’s mark, ACORN and
acorn design, their contemporaneous use on the legally
Serial No. 75/009,259
6
identical goods involved in this case is likely to cause
confusion as to the source or sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act
is affirmed.
R. L. Simms
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board