BumBum Bacana Bodywear Corp.

Trademark Trial and Appeal Board

Feb 7, 2008

No. 78454842 (T.T.A.B. Feb. 7, 2008)

Mailed:
February 7, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re BumBum Bacana Bodywear Corp.
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Serial No. 78454842
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Daniel S. Polley of Daniel S Polley, P.A. for BumBum Bacana
Bodywear Corp.

Sally Shih, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
_______

Before Bucher, Zervas and Cataldo, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On July 22, 2004, BumBum Bacana Bodywear Corp.
(“applicant”) filed an application to register the mark

THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser No. 78454842
2
on the Principal Register for goods ultimately identified
as “pants, shirts, jackets, capris, tops, shorts, skirts,
[and] unitards, sold in gyms, health clubs, and sportswear
stores” in International Class 25. The literal element of
the mark claimed by applicant is BUMBUM BACANA. Applicant
has claimed dates of first use anywhere and first use in
commerce on April 1, 2003. Also, applicant has entered a
statement into the record providing that the foreign
wording in the mark translates into English as “cool.”
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark BACANA (in standard
character form) for “beachwear, shoes and swim wear” in
International Class 25.1 The registration includes the
following statement: “The English translation of the word
BACANA is ‘cool,’ as in the American English slang, with
the meaning ‘very good,’ ‘excellent,’ or ‘fashionable.’”
Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
have filed briefs. As discussed below, the refusal to
register is affirmed.

1 Registration No. 3056439, issued January 31, 2006.
Ser No. 78454842
3
Our likelihood of confusion 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 (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We first address the du Pont factor regarding the
similarity or dissimilarity of the goods as identified in
the application and in the cited registration.
Registrant’s identification of goods includes “beachwear”,
which is broadly defined in The Random House Dictionary of
the English Lanugage (2d ed. unabridged 1987) as “clothing
for wear at a beach, swimming pool, or the like.”2
Applicant's identification of goods includes for its
clothing items the trade channel limitation “sold in gyms,
health clubs and sportswear stores.” Although applicant

2 We take judicial notice of this definition. See University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983)(the Board may take judicial notice of dictionary
definitions).
Ser No. 78454842
4
argues that registrant’s goods would not be sold in “gyms,
health clubs and sportswear stores,” we disagree and find
that at a minimum, t-shirts, tops and shorts which are
suitable “for wear at a beach” would also be sold in “gyms,
health clubs, and sportswear stores.” Thus, we find that
some of applicant's goods are encompassed within
registrant’s “beachwear,” even if sold in gyms, health
clubs and sportswear stores.
As to applicant's remaining goods, i.e., pants,
jackets, capris, skirts and unitards sold in gyms, health
clubs and sportswear stores, we find that they are
sufficiently similar or related to registrant’s goods.
Applicant's goods consist of clothing items sold in gyms,
health clubs and sportswear stores. They hence are suited
to the sporting and fitness fields. Registrant’s “shoes”
are not limited to particular types of shoes, and
necessarily include athletic shoes that could be sold in
gyms, health clubs and sportswear stores. Thus,
applicant's pants, jackets, capris, skirts and unitards are
likely to be sold next to registrant's athletic shoes, in
gyms, health clubs and sportswear stores. Moreover, the
Board has found athletic shoes to be related to athletic
clothing. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974
F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992) (court affirmed
Ser No. 78454842
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Board's holding of likelihood of confusion between
KangaROOS (and design) for clothing, namely, athletic
shoes, sweatsuits and athletic shirts and KANGOL (and
design) for golf shirts having collars). See also In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991) (stylized
ESSENTIALS for women's shoes v. ESSENTIALS for women's
clothing, namely, pants, blouses, shorts and jackets).
Thus, because applicant's goods are encompassed within
or related to registrant’s goods, we resolve the du Pont
factor regarding the similarity or dissimilarity of the
goods against applicant.
With respect to the du Pont factor regarding trade
channels, we note that registrant’s identification of goods
is not limited to particular trade channels. Our
determination of the issue of likelihood of confusion must
be made on the basis of the goods as they are identified in
the involved registration; because there are no trade
channel limitations in the identification, we presume that
the registration encompasses all goods of the nature and
type described, and that the identified goods move in all
channels of trade that would be normal for such goods, and
that they are available to all classes of purchasers for
the described goods. See In re Linkvest S.A., 24 USPQ2d
1716 (TTAB 1992); In re Elbaum, 211 USPQ 639 (TTAB 1981).
Ser No. 78454842
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Accordingly, we find that applicant's goods sold in gyms,
health clubs and sportswear stores travel in the same trade
channels as those of registrant’s goods which would be sold
in gyms, health clubs and sportswear stores. This
certainly would be the case with respect to applicant's
shorts, tops and t-shirts, which are encompassed within
registrant’s identification of goods. The du Pont factor
regarding trade channels weighs in favor of finding a
likelihood of confusion.
We turn next to the du Pont factor regarding the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. Palm Bay Imports, Inc.,
supra. The test, under this du Pont factor, 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 that confusion as to the source of the goods
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Finally, in cases
such as this, where some of applicant’s goods are
Ser No. 78454842
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encompassed within some of the goods identified in the
cited registration, the degree of similarity between the
marks which is required to support a finding of likelihood
of confusion is less than it would be if the goods were not
identical. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
We initially turn to applicant's main arguments
regarding the marks. First, applicant has argued that
registrant's mark must be considered highly suggestive in
view of the translation of BACANA as “cool,” “very good,”
“excellent” or “fashionable.” Brief at p. 3. We are not
convinced that U.S. consumers would translate BACANA; there
is no evidence in the record showing the number of persons
in the United States who understand Portuguese, and
particularly Portuguese slang words.3 Rather, we find that
U.S. consumers will likely consider BACANA as merely a

3 If BACANA in registrant’s mark should be translated, so should
BACANA in applicant's mark. We question, however, whether
applicant would want U.S. consumers to translate its mark.
“Bumbum” is a Portuguese slang expression for “bum,” i.e.,
“buttocks.” See Portuguese definition of the English word “bum”
and English definition of the Portuguese word “bumbum” in the
online version of Collins Portuguese Dictionary located at
credoreference.com, of which we also take judicial notice.
“Bacana” is translated in A Portuguese English Dictionary,
Stanford Univ. Press, (1958) as “(adj., slang) smart, elegant;
first-rate, ‘tops.’” (We have also taken judicial notice of this
definition of “bacana.”) “Bacana” evidently is a slang
expression in Portuguese. Thus, applying the dictionary
definitions, one translation of applicant's entire mark could be
“first rate buttocks.”
Ser No. 78454842
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foreign sounding term which is arbitrary in the context of
the goods. See ConAgra Inc. v. Saavedra, 4 USPQ2d 1245
(TTAB 1987)(“To the majority of consumers in the United
States who do not understand Spanish, the term would not be
understood but would convey a vague Spanish connotation”).
Second, applicant has argued that “the BumBum portion
of Applicant's word mark is the more distinctive portion
and the portion of Applicant's mark having the most source
identifying significance” because BUMBUM is positioned
above BACANA and in larger lettering than BACANA. Brief at
p 3. We disagree. BACANA is not in such smaller letters
or in a location where it has significantly less prominence
in applicant's mark in comparison to BUMBUM. Given the
overall design of the mark, consumers could easily perceive
BACANA as a house mark or a primary mark, similar to POLO
or PERRY ELLIS, with BUMBUM identifying a particular line
of clothing, e.g., sportswear. See First International
Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988)
(the addition of matter such as a house mark, primary mark
or other material to one of two otherwise similar marks,
will not necessarily be sufficient to distinguish the marks
as a whole). Thus, while BACANA is in smaller lettering
than BUMBUM and positioned underneath BUMBUM, BACANA still
Ser No. 78454842
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plays a significant role in forming the overall appearance
and commercial impression of applicant's mark.4
When we consider applicant's mark as a whole, with the
foregoing in mind, we find the marks to be similar in sound
and appearance, due to the shared term BACANA. Although
the marks are not identical in appearance and sound due to
the presence of BUMBUM in applicant’s mark, that point of
dissimilarity does not suffice to overcome the similarity
in appearance and sound which results from the presence of
BACANA in both marks. The addition of BUMBUM to
registrant’s mark does not impart any special meaning to
applicant's mark and hence does not distinguish the
connotation of applicant's mark from that of the cited
registered mark. In terms of overall commercial
impression, we find the marks to be similar too because
they both include the term BACANA, which, as indicated
above, has no significance to U.S. purchasers other than as
a foreign sounding term.

4 The oval background in applicant's mark would likely be
considered a background element which adds little to the overall
commercial impression of the mark. Plain geometric designs are
generally not seen by consumers as particularly distinctive
elements. In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381 (TTAB
1988) (“In particular, common geometric shapes such as circles,
ovals, triangles, diamonds and stars, when used as backgrounds
for the display of word or letter marks, are not regarded as
trademarks for the goods to which they are applied absent
evidence of distinctiveness of the design alone”).

Ser No. 78454842
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Thus, in viewing the marks in their entireties, we
find that they are similar rather than dissimilar. They
certainly are sufficiently similar that confusion is likely
to result if the marks are used on legally identical goods
traveling in the same trade channels, as they are/do in
this case. See Century 21 Real Estate Corp. v. Century
Life of America, supra. The first du Pont factor therefore
weighs in favor of a finding of likelihood of confusion.
In short, we find that the marks are similar, and that
the goods and trade channels are legally identical. Based
on these findings under the relevant du Pont factors, we
conclude that a likelihood of confusion exists.
Applicant’s arguments to the contrary are not persuasive.
Decision: The refusal to register under Section 2(d)
is affirmed.