Calza-turificio Ennesport and Style S.N.C. di Spadetto Nevio e Pellizzon Ornella

Trademark Trial and Appeal Board

Aug 9, 2001

No. 75571988 (T.T.A.B. Aug. 9, 2001)

8/9/01

Hearing: Paper No. 15
June 21, 2001 RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Calzaturificio Ennesport and Style S.N.C., a
partnership of Nevio Spadetto and Ornella Pellizzon
________

Serial No. 75/571,988
_______

Martin P. Hoffman of Hoffman, Wasson & Gitler, PC for
Calzaturificio Ennesport and Style S.N.C. Di Spadetto Nevio
E Pellizzon Ornella.

Jacqueline A. Lavine, Trademark Examining Attorney, Law
Office 109 (Ronald Sussman, Managing Attorney).
_______

Before Cissel, Quinn and Wendel, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
On December 16, 1998, applicant, a general partnership
under the laws of Italy, filed the above-identified
application to register the mark "HBS" on the Principal
Register for "sporting shoes, namely, snowboard boots,” in
International Class 25. The application was based on
applicant's assertion that it possessed a bona fide
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/571,988
2
intention to use the mark in commerce in connection with
these goods.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
on the ground that if applicant were to use its mark in
connection with snowboard boots, the mark would so resemble
the mark shown below,

which is registered1 for "clothing, namely—ladies (sic)
suits and dresses," in International Class 25, that
confusion would be likely. She based this conclusion on
her finding that the marks "are virtually identical and the
goods are related."
Applicant responded to the refusal to register with
argument that confusion would not be likely in view of the
fact that snowboard boots are expensive items of athletic
footwear, sold to sophisticated purchasers in ski shops and
high-end sporting goods shops, whereas ladies’ suits and

1 Reg. No. 1,515,404, issued on the Principal Register to E. H.
Woods Fashions Inc. on December 6, 1988. Combined affidavit
under Sections 8 and 15 of the Act accepted and acknowledged.
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3
dresses are ordinary clothing items, not expensive sporting
goods. Applicant further argued that ladies’ dresses and
suits are not sold through the same channels of trade as
snowboard boots are.
The Examining Attorney was not persuaded by
applicant's arguments, and the refusal to register was made
final in her second Office Action. Submitted in support of
the refusal to register were copies of thirteen third-party
registrations and applications for registration. The
Examining Attorney contended that these registrations and
applications show "that applicant's (sic) and registrant's
(sic) sell ladies (sic) dresses and suits and other
clothing and snowboard boots all under the same
trademark[s]."
Applicant responded with further argument that
confusion would not be likely. Submitted with this
response were copies of clippings from Transworld
Snowboarding Business magazine and pages from applicant’s
web site on the Internet. The magazine article notes that
the average price paid by a consumer for snowboard boots in
1999 was $157.00, that snowboard boots are sold in
specialty stores and in conjunction with bindings,
snowboards, parkas and pants, and that snowboarding
equipment may be sold in concert with skis and other
Ser No. 75/571,988
4
related winter outdoor sports equipment. The pages from
applicant's web site demonstrate that substantial
distinctions can be drawn between snowboard boots and
ladies’ dresses and suits.
Applicant timely filed a Notice of Appeal. Both
applicant and the Examining Attorney filed appeal briefs2,
and both presented their arguments at the above-referenced
oral hearing.
The sole issue before the Board in this appeal is
whether applicant's mark, if used in connection with
snowboard boots, would be likely to cause confusion with
the cited registered mark for ladies’ suits and dresses.
Based on careful consideration of the record in this
application, the arguments made by applicant and the
Examining Attorney, and the relevant legal precedent with
regard to likelihood of confusion, we hold that the
Examining Attorney has not met her burden of proof in
establishing a proper basis for refusing registration.
In the case of In re E. I. Du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973), the predecessor to

2 In her brief, the Examining Attorney objects to applicant’s
submission with its brief of “some new evidence regarding its
goods and the marketing of said goods,” but the attachments to
applicant’s brief all appear to have been previously made of
record with applicant’s timely response to the second Office
Action. The objection is therefore not well taken.
Ser No. 75/571,988
5
our primary reviewing court set out the factors to be
considered in determining whether confusion is likely.
Chief among these factors are the similarity of the marks
as to appearance, pronunciation, meaning and commercial
impression, and the similarity of the goods or services as
set forth in the application and cited registration,
respectively. The Examining Attorney has the burden of
proof to establish that the refusal to register is
justified. In re 3Com Corp., 56 USPQ2d 1060 (TTAB 2000).
In the instant case, notwithstanding applicant’s
contention to the contrary, the marks are in fact quite
similar. The dominant portion of the registered mark is
the same as the mark applicant seeks to register, “HBS.”
Neither the minor stylization of the lettering nor the
presence of the abbreviation “LTD.” in the registered mark
significantly alters the commercial impression of that
mark. Because the commercial impressions created by
applicant’s mark and the registered mark are substantially
the same, if these two marks were used on similar or
commercially related goods, confusion would plainly be
likely.
The record in this application does not establish that
confusion is likely, however, because it does not show that
a viable relationship exists between ladies’ dresses and
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suits, on the one hand, and snowboard boots, on the other,
such that the use of the same or similar marks on both
types of goods would lead to the mistaken belief that they
come from the same source. As noted above, it was the
burden of the Examining Attorney to establish this, but the
record falls short of doing so.
The evidence made of record by applicant shows that
snowboard boots are expensive goods sold as sporting goods
in specialty ski shops and sporting goods stores. The only
evidence proffered by the Examining Attorney in support of
her contention that snowboard boots are related to ladies’
dresses and suits is the thirteen third-party registrations
and applications referred to above.
In In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1983), citing In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467 (TTAB 1988), the Board stated that although
third-party registrations are not evidence that the marks
shown therein are in commercial use or that the public is
familiar with them, nevertheless third-party registrations
which individually cover a number of different items and
which are based on use in commerce may have some probative
value to the extent that they serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source.
Ser No. 75/571,988
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One problem with the evidence submitted by the
Examining Attorney in the instant case, however, is that
much of it relates to applications, rather than to
registrations. Moreover, the actual third-party
registrations the Examining Attorney refers to either do
not list both the goods set forth in the application and
those specified in the cited registration or they are not
registrations based on use. Several list “snowboard boots”
and “clothing” or “women’s clothing,” but the clothing is
then specified with a list of the specific items, such as
“gloves,” “winter hats” or “ear muffs,” without mention of
ladies’ dresses or suits. These registrations hardly
establish that other entities have registered their marks
for both ladies’ dresses and suits and snowboard boots.
Furthermore, neither an application based on the assertion
of an intention to use a mark nor a registration issued
under Section 44 of the Act based on a registration in a
foreign country satisfies the use requirement in the rule
set forth in the Trostel case, supra.
In short, none of the evidence submitted by the
Examining Attorney shows a use-based registration listing
both the goods for which applicant seeks to register its
mark and the specific goods set forth in the cited
registration. Especially in view of the materials
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submitted by applicant, which show these goods to be
intrinsically different and that applicant’s goods are sold
through different trade channels from those in which
ordinary clothing items like those listed in the
registration are sold, we have no basis upon which to reach
the conclusion asserted by the Examining Attorney, that the
use of these similar marks on these products would be
likely cause confusion as to source.
DECISION: The refusal to register under Section 2(d)
of the Act is reversed.

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