Cache, Inc.

Trademark Trial and Appeal Board

Jul 9, 2010

No. 77565256 (T.T.A.B. Jul. 9, 2010)

Mailed: 7/9/10

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cache, Inc.
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Serial No. 77565256
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David L. May of Nixon Peabody for Cache, Inc.

Drew Leaser, Trademark Examining Attorney, Law Office 112
(Angela Bishop Wilson, Managing Attorney).
_______

Before Quinn, Holtzman and Taylor, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Cache, Inc. filed an application to register the mark
CONTOUR for “women’s clothing, namely, tops, bottoms,
jackets and dresses” in International Class 25.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when applied
to applicant’s goods, so resembles the previously

1 Application Serial No. 77565256, filed September 9, 2008,
alleging first use anywhere and first use in commerce on August
15, 2007.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 77565256
2
registered mark CONTOUR for “men’s underwear, shorts and
swimsuits” in International Class 252 as to be likely to
cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that even though the marks are
identical, there is no likelihood of confusion because the
goods are different. Applicant asserts that its clothing
is sold only in its own high-fashion branded stores, Cache,
and is directed solely at women.
The examining attorney maintains that the marks are
identical and that the goods are related. In connection
with the goods, the examining attorney introduced several
third-party registrations, excerpts from the websites of
third-party on-line retailers, and NEXIS excerpts to show
that both women’s and men’s clothing may emanate from a
common source.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d

2 Registration No. 2576958, issued June 11, 2002; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
Ser No. 77565256
3
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first turn to consider the marks. We must compare
the marks in their entireties as to appearance, sound,
connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
marks herein are identical in all respects, and applicant
does not contend to the contrary. The identity between the
marks weighs heavily in favor of finding a likelihood of
confusion.
We next turn to consider the goods. With respect to
the second du Pont factor, in comparing the goods, we
initially note that where identical marks are involved, as
is the case here, the degree of similarity between the
parties’ goods that is required to support a finding of
likelihood of confusion declines. In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir. 1993); Time
Ser No. 77565256
4
Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB
2002); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001).
It is only necessary that there be a viable relationship
between the two to support a finding of likelihood of
confusion. In re Concordia International Forwarding Corp.,
222 USPQ 355, 356 (TTAB 1983). The issue, of course, is
not whether purchasers would confuse the goods, but rather
whether there is a likelihood of confusion as to the source
of the goods. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
In considering this du Pont factor, we acknowledge that
there is no per se rule governing likelihood of confusion
in cases involving clothing items. In re British Bulldog,
Ltd., 224 USPQ 854 (TTAB 1984).
Accordingly, we compare applicant’s “women’s clothing,
namely, tops, bottoms, jackets and dresses” with
registrant’s “men’s underwear, shorts and swimsuits.” In
connection with this du Pont factor, the examining attorney
introduced several third-party use-based registrations
showing that the same entities have registered a single
mark for a variety of clothing items, with no gender-
specific limitation (meaning that, in many cases, the
clothing is presumed to include items both for women and
men, as for example, jackets and shorts). “Third-party
registrations which cover a number of differing goods
Ser No. 77565256
5
and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in
use on a commercial scale or that the public is familiar
with them, may nevertheless have some probative value to
the extent that they may serve to suggest that such goods
or services are of a type which may emanate from a single
source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993).
In this regard, the examining attorney also submitted
excerpts of several third-party websites showing that on-
line retailers may sell both women’s and men’s clothing
under the same mark, albeit the marks are in the nature of
designer and/or house marks. The marks include
AEROPOSTALE, BANANA REPUBLIC, CALVIN KLEIN, J. CREW,
LACOSTE and RALPH LAUREN.
Insofar as the trade channels and classes of
purchasers are concerned, we note that there are no trade
channel limitations in either applicant’s or registrant’s
identification of goods. Accordingly, we must presume that
the goods, as identified, are marketed in all normal trade
channels for such goods and to all normal classes of
purchasers for such goods. In re Elbaum, 211 USPQ 639
Ser No. 77565256
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(TTAB 1981). Thus, given the similarity between women’s
and men’s clothing, we presume that the goods move in the
same or similar trade channels (e.g., clothing stores, on-
line retailers, department stores, and the like). This
presumption is buttressed by the excerpts retrieved from
the NEXIS database showing that a single retail
establishment may offer both women’s and men’s clothing
(e.g., XXI Forever, Fashion U, and Runway 5). We are not
persuaded, therefore, by applicant’s argument that its
clothing is sold only in its own high-fashion stores
directed solely to women; this contention is unavailing
because neither its identification nor registrant’s are
limited with respect to trade channels.
Further, given the absence of any limitations as to
purchasers, we presume that the goods are bought by the
same classes of consumers, including ordinary ones.
Inasmuch as the identifications do not include any
limitations as to cost, we must also presume that the goods
include relatively inexpensive everyday clothing items that
would be subject to impulse purchase made by ordinary
consumers with nothing more than ordinary care.
The above du Pont factors relating to the similarities
between the goods, and the identity in trade channels,
Ser No. 77565256
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purchasers and conditions of sale all weigh in favor of
finding a likelihood of confusion.
We recognize the obvious differences between men’s and
women’s clothing, and that these items often are sold in
different stores and/or in different sections of retail
outlets such as department stores. However, the case law
and the evidence of record herein demonstrate that
consumers have been exposed to extensions across the gender
gap by many manufacturers. In fact, our primary reviewing
court and this Board have on numerous occasions held that
the sale of different clothing items – including items
intended for a different gender of consumer – under the
same or similar marks is likely to cause confusion in the
trade. This conclusion has been based essentially upon
common trade channels; common purchasers and, in
particular, the likelihood of adults purchasing apparel for
their friends and family of the opposite gender; and the
function of a trademark as a single source indicator. See
Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286
F.2d 623, 128 USPQ 549, 550 (CCPA 1961) (likelihood of
confusion between identical marks WINTER CARNIVAL for
“men’s and boys’ underwear” and “women’s boots”); In re
Cook United Inc., 185 USPQ 444 (TTAB 1975) (likelihood of
confusion between GRANADA for men’s suits, coats and
Ser No. 77565256
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trousers and ladies’ pantyhose and hosiery); and Esquire
Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB
1964) (likelihood of confusion between SLEEX for brassieres
and girdles and for men’s slacks). As the Board previously
stated in finding a likelihood of confusion between
applicant’s mark LE CACHET DE DIOR for men’s shirts and
registrant’s mark CACHET for dresses:
With respect to applicant’s men’s
shirts vis-à-vis dresses, while the
respective goods are used by people of
different sexes, it is clear that
dresses are often purchased by men for
women and the same is true with respect
to men’s dress shirts being purchased
by women for men. Both dresses and
men’s shirts are found in non-specialty
clothing stores as well as department
stores. That men’s shirts and dresses
would emanate from a single source
under the same trademark is evidenced
by applicant’s own admission that it
uses the mark “CHRISTIAN DIOR” as a
trademark for both men’s clothing and
women’s clothing...

In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985).
Although the Board made this observation twenty-five years
ago, there is nothing in the record to suggest that the
same purchasing scenarios do not still exist today.
Consumers familiar with registrant’s mark CONTOUR for men’s
clothing will be likely to assume, upon encountering the
identical mark for women’s clothing, that this is simply a
case of registrant’s expansion of its pre-existing CONTOUR
Ser No. 77565256
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line into women’s clothing. As indicated earlier, the
identity between the marks weighs heavily in favor of
finding a likelihood of confusion.
We conclude that consumers familiar with registrant’s
men’s clothing items sold under the mark CONTOUR would be
likely to believe, upon encountering applicant’s mark
CONTOUR for women’s clothing items, that the goods
originated from or are associated with or sponsored by the
same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.