Bydesign

Trademark Trial and Appeal Board

Oct 23, 1998

No. 75084212 (T.T.A.B. Oct. 23, 1998)

Paper No. 10
DEB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bydesign
________
Serial No. 75/084,212
_______
Arthur L. Plevy of Plevy & Associates for applicant
Raul Cordova, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney)
_______
Before Seeherman, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant, Bydesign, a Delaware corporation, has
filed an application for registration of the mark "PASSI"
for "clothing, namely ladies’ sweaters, knit tops, and
dresses; ladies’ fleece tops and bottoms; ladies’ jackets
and rompers, ladies’ knit and woven blouses and jerseys."1

1 Serial No. 75/084212, in International Class 25, filed
April 5, 1996, based on an allegation of a bona fide intention to
use the mark in commerce.
Ser No. 75/084,212
2
The Trademark Examining Attorney issued a final
refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s proposed mark, PASSI, when used on these
clothing items, so resembles the registered mark, PASSO, as
shown below, as applied to, inter alia, “clothing, namely,
T-shirts, aprons and hats,” as to be likely to cause
confusion, or to cause mistake, or to deceive.2
Applicant has appealed the final refusal to register.
Briefs have been filed but applicant did not request an
oral hearing. We affirm the refusal to register.
Applicant asserts that the respective goods are
unrelated and move in different channels of trade, and that
the marks have different commercial impressions,
pronunciations and meanings.

2 Registration No. 1,375,820, issued on December 17, 1985.
The registration sets forth a date of first use of March 5, 1985
and a date of first use in commerce of March 5, 1985; §8
affidavit accepted and §15 affidavit filed. In addition to the
clothing items in Int. Class 25, this multiple-class registration
also includes “Heat transfers or iron-on decals,” in Int. Class
16.
Ser No. 75/084,212
3
The Trademark Examining Attorney contends that the
goods of both parties are common items of apparel moving in
the same channels of trade, with marks that are similar in
appearance and sound.
In the course of rendering this decision, we have
followed the guidance of In re E.I. DuPont DeNemours & Co.,
476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973),
which sets forth the factors which, if relevant, should be
considered in determining likelihood of confusion.
There can be little question that the goods of the
parties are closely related. Indeed, the T-shirts
identified in the cited registration are similar to several
items of applicant’s identified clothing, such as women’s
sweaters, blouses and various tops.3
Applicant argues that since the registration includes
iron-on decals, hats and aprons, then presumably
registrant’s goods move in different channels of trade from
the “ordinary, day-to-day apparel items” listed in
applicant’s application. However, that argument ignores
the fact that the registration lists T-shirts without any
type of restriction. It is fundamental that likelihood of

3 See In re M. Serman & Company, Inc., 223 USPQ 52 (TTAB
1984) [T-shirts closely related to sweaters and skirts].
Ser No. 75/084,212
4
confusion must be assessed on the basis of the goods as
described in the trademark application and cited
registration.4 T-shirts and knit tops, woven and knit
blouses and jerseys, and the like, are all items that may
be sold to the same class of consumers and in the same
channels of trade, including women’s clothing stores.
Therefore, we must consider applicant's goods and those of
the registrant to travel in the same channels of trade.
Furthermore, applicant’s and registrant’s goods are the
types of items that are purchased by members of the general
public. Because of the nature of the items, such ordinary
purchasers are not likely to exercise a great degree of
care in their selection.
We turn then to the question of whether the marks
involved herein are so similar that use thereof on the
identified goods would be likely to generate confusion. In
evaluating the similarity of the marks, the Board must
examine the overall impression created by the marks,
including a comparison of the appearance, sound and meaning
of the marks, as well as the manner in which they are
displayed. Under the sight, sound and connotation trilogy,
we find that there is a likelihood of confusion.

4 Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Ser No. 75/084,212
5
First, the Board notes that each mark comprises a
single, five-letter word beginning with the identical four
letters, "PASS-” and ending with a vowel. Given the
composition of these two words, applicant’s mark is much
closer in overall appearance to registrant’s mark than
applicant would have us conclude.
While registrant’s mark involves a somewhat stylized
presentation, we find that such is not sufficient to
distinguish the marks. Inasmuch as it is the word portion
that is spoken, consumers would remember the word
comprising registrant’s mark rather than any stylization.
Moreover, applicant has applied for the mark in the form of
a typed drawing. A registration issuing in that format
would enable applicant to use its mark in a stylized
manner, including a stylization not unlike registrant’s
special form drawing.
The marks can also be pronounced similarly. Although
neither is an English word, it is reasonable to conclude
that because they share a similar structure – the letters
P-A-S-S followed by a vowel -- they would be accorded a
similar sound and cadence.5

5 Cf. Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920,
926, 231 USPQ 913, 916-917 (10th Cir. 1986) ("BREW NUTS" and
"BEER NUTS" were held to be similar marks).
Ser No. 75/084,212
6
With respect to the connotations of the terms, the
Trademark Examining Attorney has made of record an excerpt
from an Italian dictionary that shows a definition of
“PASSO” meaning “passage” or “step.” There is no evidence
of a meaning for “PASSI”; applicant indicates that it was
selected because it is the surname6 of one of the officers
of applicant corporation. In any event, we find that
ordinary purchasers of these clothing items would not be
familiar with the likely origins of these words as debated
by the applicant and the Examining Attorney. The average
consumer seeing these two unfamiliar words on clothing
items would not ascribe a connotation to either mark.
Accordingly, the Board concludes that most consumers would
regard the marks as arbitrary, and would not distinguish
them based upon their connotations.
Although we acknowledge that there are slight
differences between the marks, consumers would neither note
nor remember such differences. Under actual marketing
conditions, consumers do not necessarily have the luxury of

6 The Trademark Examining Attorney never refused
registration on the ground that applicant’s mark is primarily
merely a surname under §2(e)(4) of the Act, perhaps because
applicant stated that it was a rare surname. In any event, that
issue is not before us.
Ser No. 75/084,212
7
making side-by-side comparisons between marks and must rely
upon their imperfect recollections.7
Applicant has argued that the cited mark is weak and
therefore should be accorded a narrow scope of protection.
It bases this argument on excerpts from some computer
records taken from an unidentified source. In the Office
action following this submission, the Trademark Examining
Attorney objected to applicant’s submission, stating that
evidence of these registrations was not in the proper form.
The Examining Attorney’s objection is well taken.8 In order
to make third party registrations of record, soft copies of
the registrations or photocopies of the appropriate U.S.
Patent and Trademark Office electronic printouts must be
submitted.9
We should point out in passing that even if the
registrations had properly been made of record, they would
not alter our decision herein. We remain unpersuaded by
applicant’s attempt to portray “PASS-“ formative marks as
being weak in the clothing field. Not one of the third-
party marks submitted by applicant (e.g., “PUNT, PASS AND

7 Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255
(TTAB 1980).
8 In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).
9 See, Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
Ser No. 75/084,212
8
KICK,” “PASSWORD,” “PASSIONATE”) is as similar to PASSO as
is applicant’s PASSI. While the two marks at issue in the
instant case have very similar appearances, they look
nothing at all like those marks where the word “PASS” is
used in its ordinary English language meaning, or is used
as the root of another ordinary English word
Accordingly, we find confusion to be likely between
the mark "PASSI" for the women’s clothing items recited in
the instant application and the registered stylized mark,
“PASSO” as applied to T-shirts, aprons and hats.
Decision: The refusal to register is affirmed.
E. J. Seeherman
P. T. Hairston
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board