Carlos Emilio Valencia-Suarez

Trademark Trial and Appeal Board

Mar 24, 2011

No. 77565198 (T.T.A.B. Mar. 24, 2011)

Mailed: March 24, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
________

In re Carlos Emilio Valencia-Suárez
________

Serial No. 77565198
Filed: September 8, 2008
_______

Arturo Perez-Guerrero, Law Offices of Arturo Perez-Guerrero
for applicant.

Renee D. McCray, Trademark Examining Attorney, Law Office
111, Craig Taylor, Managing Attorney.
_______

Before Bucher, Mermelstein, and Wolfson, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Applicant seeks registration of the mark

for “Belts; Blouses; Capris;
Jackets; Jeans; Panties; Pants; Shirts; Shorts; Skirts;
Socks; Stockings; Sweat shirts; T-shirts” in International
Class 25.1
The examining attorney has refused registration, having
determined that registration of applicant’s mark would lead

1 Based on the allegation of a bona fide intent to use the mark
in commerce. Applicant disclaimed the exclusive right to use
“JEANS” apart from the mark as shown. “The color(s) red and
white is/are claimed as a feature of the mark.”
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77565198
2
to a likelihood of confusion in view of Registration No.
33702682 for LA COCOA (in standard characters) as used on
clothing, namely, coats, leather coats, pants,
trousers, jeans, overalls, jackets, evening
jackets, tuxedos, blousons, fleece pullovers,
waistcoats, business shirts, vests, blazers,
suits, dresses, gowns, knit cardigans, knit
pants, sweaters, cardigan sweaters, knit shirts,
pullovers, blouses, sports shirts, sport jerseys,
polo shirts, golf trousers, golf shoes, t-shirts,
jogging suits, tank tops, knit skirts, skirts,
swimsuits, pajamas, bathrobes, dressing gowns,
cloaks, shorts, footwear, headwear; clothing
accessories, namely, neckties, gloves, boxer
shorts, scarves, suspenders, cummerbunds, belts,
underwear, hats, sun visors, sweat bands, socks,
stockings and tights, shawls, hosiery and
waterproof clothing, namely, raincoats and rain
boots.

Trademark Act § 2(d); 15 U.S.C. § 1052(d). Applicant
appeals from the examining attorney’s final refusal.
We affirm.
I. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay
Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d

2 Issued January 15, 2008, based on use of the mark in commerce.
Serial No. 77565198
3
1201 (Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that
“[t]he fundamental inquiry mandated by Section 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); In re Azteca Rest.
Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
II. Discussion
A. Similarity of the Goods; Channels of Trade and
Class of Consumers

Applicant’s goods are identified as “belts; blouses;
capris; jackets; jeans; panties; pants; shirts; shorts;
skirts; socks; stockings; sweat shirts; [and] t-shirts.”
Each of applicant’s goods is identical to or very closely
related to one or more of the goods set out in the cited
registration. Applicant does not dispute that its goods
are identical in part and otherwise closely related to
those in the prior registration, confining its arguments to
the differences in and strength of the marks at issue.
With respect to the channels of trade and class of
consumers for the identified clothing items, we start with
the principle that – unless otherwise limited – goods
Serial No. 77565198
4
recited in an application or registration are presumed to
be provided in all channels of trade normal for such goods,
and that they are purchased by all of the usual consumers
for them. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)
(citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139
(CCPA 1958)). The fact that the goods in this case are
identical in part means that we must assume that their
purchasers and channels of trade are also identical, at
least in part. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”). Again, applicant makes no argument that its
channels of trade or classes of consumers differ from those
of the cited registrant.
We conclude that the subject application and the cited
registration include identical, and otherwise closely
related, goods and that those goods are sold in identical
Serial No. 77565198
5
channels of trade to the same classes of consumers. These
du Pont factors strongly favor the finding of a likelihood
of confusion.
B. The Similarity or Dissimilarity of the Marks in
Their Entireties

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. “[T]he test 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 so
that confusion as to the source of the goods offered under
the respective marks is likely to result.” H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008). In
comparing the marks, we keep in mind that “[w]hen marks
would appear on virtually identical goods..., as is the
case here, the degree of similarity necessary to support a
conclusion of likely confusion declines.” In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010)
(citing Century 21 Real Estate Corp. v. Century Life of
Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)).
Moreover, while we must consider the marks in their
entireties, it is entirely appropriate to accord greater
Serial No. 77565198
6
importance to the more distinctive elements in the marks.
“[I]n articulating reasons for reaching a conclusion on the
issue of confusion, there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in
their entireties. Indeed, this type of analysis appears to
be unavoidable.” In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
As noted above, applicant’s mark is COCOA JEANS. The
applied-for mark presents this wording in white block type
against a rectangular red carrier with a minimal
stylization or drawing element, namely a solid white circle
inside the first letter “o” in COCOA. While we do not
ignore these design elements, we find that they are
minimal, and do not significantly add to the overall
impression of applicant’s mark. In so finding, we note
that neither applicant’s rectangular carrier nor its
filled-in letter “o” is highly distinctive. Moreover, the
cited mark is registered in standard characters, and thus
is “not limited to any particular rendition of the
mark....” Cunningham v. Laser Golf Corp., 55 USPQ2d at
1847. In evaluating likelihood of confusion based on a
typed or standard character registration, one must consider
Serial No. 77565198
7
“all reasonable manners” in which the mark could be
depicted, including a manner similar to that in which
applicant’s mark is displayed. INB Nat’l Bank v. Metrohost
Inc., 22 USPQ2d 1585, 1588 (TTAB 1992).
As is obvious, LA COCOA and COCOA JEANS are similar in
that they both comprise the word “COCOA,” which on this
record appears to be entirely arbitrary, with no
descriptive or suggestive meaning relevant to the
identified goods. Further, it is clear that the term
“JEANS,” which applicant has disclaimed, is descriptive or
generic of both applicant’s goods and those of the
registrant (both of which include “jeans”).
While descriptive, generic, or otherwise disclaimed
matter is not removed from the mark, and we must consider
the marks in their entireties, the “descriptive component
of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.” Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000) (quoting In re Nat’l Data Corp., 224 USPQ at
752). Accordingly, the term “JEANS” in applicant’s mark
does little or nothing to distinguish it from the mark in
the cited registration. And while the term “LA” in the
cited registration does not appear to have any relevant
meaning, the word “COCOA” visually and aurally dominates
Serial No. 77565198
8
the registered mark.
We thus find that COCOA is clearly the dominant
feature of both marks, and that the marks are substantially
similar overall in appearance, sound, and meaning, and
commercial impression a factor which favors a finding of
likelihood of confusion.
C. Applicant’s Arguments
Applicant raises two arguments in favor of
registrability. First, that it is the owner of a prior
registration for the mark CR COCOA REPUBLIC JEANS for the
same goods as in the subject registration,3 and second, that
third parties have registered the marks COCACHIC and
COCOANUT WEAVE, both for International Class 25 goods
(although the goods were not listed). In its appeal brief,
applicant further cited the marks COCONA and C COCONA, also
registered for unspecified Class 25 goods.4 App. Br. at 4-
5. Applicant’s arguments are unavailing.
As for applicant’s first argument, applicant’s prior
registration does not establish a right to register any
other mark containing the word “COCOA.” Applicant’s prior

3 Registration No. 3416640, registered April 29, 2008.
4 None of these registrations was properly submitted, having
merely been listed in applicant’s responses to Office Actions and
in its brief on appeal. Nonetheless, we have considered the
information which applicant has submitted because the examining
attorney neither objected nor advised applicant that the
registrations were not properly of record.
Serial No. 77565198
9
registration is for a significantly different mark, with a
different connotation, and whether that mark would or would
not lead to a likelihood of confusion with the cited
registrant’s mark is clearly not the issue in this appeal.
Likewise, applicant’s third-party registrations (even
if we assume them to cover similar goods) are all for marks
different from those at issue here, and significantly, none
is as similar to the prior registrant’s mark as is the mark
in the subject application. In any event, we simply are
not bound by the decisions of examining attorneys. The
Board must make its own findings of fact, and that duty may
not be delegated by adopting the conclusions reached by an
examining attorney in another case. In re Sunmarks, Inc.,
32 USPQ2d 1470, 1472 (TTAB 1994); In re BankAmerica Corp.,
231 USPQ 873, 876 (TTAB 1986). “Even if all of the third-
party registrations should have been refused registration
..., such errors do not bind the USPTO to improperly
register Applicant’s marks.” In re Shinnecock Smoke Shop,
571 F.2d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009)
(citing In re Boulevard Entm't, 334 F.3d 1336, 67 USPQ2d
1475, 1480 (Fed. Cir. 2003)).
Finally, to the extent that applicant relies on the
prior registrations to prove that COCOA is “weak,” we agree
with the examining attorney that third-party registrations
Serial No. 77565198
10
cannot be given any weight in determining the strength of a
registration. Olde Tyme Foods Inc. v. Roundy's Inc., 961
F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). While the
number and nature of similar marks in use on similar goods
may be considered on the ultimate question of likelihood of
confusion, du Pont, 177 USPQ at 567, third-party
registrations are not evidence that such marks are in use
or that consumers are familiar with them. AMF Inc. v. Am.
Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269-70
(CCPA 1973).
We conclude that neither applicant’s prior
registration nor the third-party registrations referred to
by applicant provide any rationale for registering a mark
which would otherwise be held to present a likelihood of
confusion.
III. Conclusion
We have carefully considered the entire record and the
arguments of applicant and the examining attorney. We
conclude, in light of the identical goods at issue, the
similar marks, and the identical customers and channels of
trade, that use of applicant’s mark on or in connection
with the identified goods is likely to cause confusion with
the mark in the cited prior registration.

Serial No. 77565198
11
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly affirmed.