Cecile Reinaud

Trademark Trial and Appeal Board

Sep 10, 2013

No. 77949111 (T.T.A.B. Sep. 10, 2013)

Mailed:
September 10, 2013

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________
In re Reinaud
________
Serial No. 77949111
_______
Dermot M. Sheridan, attorney at law, representing Cecile Reinaud.
Meredith Maresca, Trademark Examining Attorney, Law Office 109 (Dan Vavonese,
Managing Attorney).
_______

Before Bucher, Wolfson, and Gorowitz, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Cecile Reinaud (“applicant”) seeks registration on the Principal Register of
the mark SÉRAPHINE (in standard characters) for the following goods and services
in International Classes 25 and 35:1
“Maternity clothing, namely, shirts, pants, coats, dresses,
trousers, belts, leggings, jeans, tights, shorts, lingerie,
jumpers, t-shirts, cardigans, jackets, nightwear,
swimming suits, bikinis, tankinis, kaftans; footwear;
headgear, namely, hats and caps, knitwear, namely,
knitted shirts, dresses, jumpers, scarves and cardigans,
excluding leather blousons, leather jackets, leather three
quarters length coats, leather trousers, leather parkas,

1 Application Serial No. 77949111 was filed on March 3, 2010, claiming a date of priority of
December 29, 2009, from EU registration No. 8786352, which registered on December 10,
2010. The mark consists of the word “SERAPHINE” with an accent appearing over the first
letter “E.”
This Opinion is Not a
Precedent of the TTAB
Serial No. 77949111

2

leather coats, pelisses, fur coats, fur jackets, quilted vests”
in International Class 25; and
“Retail store services featuring maternity wear; online
retail store services featuring maternity wear; the
bringing together, for the benefit of others, of a variety of
goods in a retail store, enabling customers to conveniently
view and purchase those goods in the field of maternity
clothing, footwear, headgear, nursery furniture,
cosmetics, maternity and nursing apparel and
accessories” in International Class 35.2
The Trademark Examining Attorney has refused registration of applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), contending that
applicant’s use of its mark for its identified goods and services is likely to cause
confusion with Reg. No. 2676933 for the mark SERAPHIN (in standard character
format) for “leather blousons, leather jackets, leather three quarters length coats,
leather trousers, leather parkas, leather coats, pelisses, fur coats, fur jackets,
quilted vests” in International Class 25.3
When the refusal was made final, applicant appealed. Applicant also filed a
request for reconsideration. Upon reconsideration, the examining attorney
determined that the recitation of services in the application exceeded, in scope, the
services statement in the underlying foreign registration. The examining attorney
also determined that the mark in the foreign registration differed from that in the
subject application. In response to the ensuing Office action, applicant amended the
mark and narrowed the recitation of services as set forth above. A further action

2 The application also includes goods in Class 9 that have not been made the subject of the
refusal. The Office action dated January 13, 2011 expressly stated that the refusal was
limited to classes 25 and 35 only.
3 Registered January 21, 2003; renewed.
Serial No. 77949111

3

requested information as to whether the term SÉRAPHINE has any meaning other
than trademark significance. Applicant responded by indicating it does not.
Having maintained the refusal under Section 2(d), the examining attorney issued a
second final Office action and this appeal followed.4 For the reasons discussed
infra, we affirm the refusal to register.
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 a 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 1201 (Fed. Cir. 2003); and 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); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Comparison of the Marks
Applicant has applied to register the mark SÉRAPHINE. The registered
mark is SERAPHIN. In comparing the marks, we must consider the marks in their

4 We note that this case was twice re-assigned during prosecution, and further re-assigned
to the current examining attorney after applicant filed its appeal brief.
Serial No. 77949111

4

entireties as to appearance, sound, connotation and commercial impression, to
determine the similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at
1692. The 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. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1,
3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ 1735, 1741
(TTAB 1991), aff’d unpub’d, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus
is on the recollection of the average customer, who retains a general rather than
specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975).
Applicant’s mark differs from the mark in the cited registration in only two
respects. There is an accent over the first “e” in applicant’s mark, and applicant’s
mark ends in a final letter “e,” both of which are missing from registrant’s mark.
The overall visual similarity between the marks is unaffected by these slight
differences. The connotation of both marks is also identical in that each connotes a
“seraph” or “seraphim.” The American Heritage Dictionary of the English
Language, 5th ed. 2011, defines “seraph” as a “celestial being having three pairs of
wings” and indicates that “seraph” is a “back-formation from pl. seraphim, from
Serial No. 77949111

5

Middle English seraphin.”5 While the word appears to be rare in spoken English,
the entry in the Oxford dictionary describes literary references for the term
“seraph”; for example, it appears in Milton’s Paradise Lost, as well as (in the plural
form SERAPHIM) in the Bible. The references make it clear that to the extent the
marks would have meaning, they would be the same.6
Given this meaning, the cited mark would be considered arbitrary for the
goods and services for which it has been registered. Applicant argues that the mark
is weak, however, because there are five third-party registrations co-existing on the
Principal Register for the mark SERAPHIN and one for the mark SERAFINA.
Applicant argues that these marks are as close to the applied-for mark as is the
cited mark, making confusion unlikely. Suffice it to say, none of the two previously
cited SERAPHIN marks, or the three SERAPHIN marks submitted by applicant,
cover commercially related goods or services.7 See In re Thor Tech Inc., 90 USPQ2d
1634, 1639 (TTAB 2009) (third-party registrations of limited probative value where
goods identified in the registrations appear to be in fields which are far removed
from the goods at issue). An exception is Reg. No. 3300422 for the mark SERAFINA
for “retail store boutique services and online retail store services featuring a wide
variety of goods of others for infants, toddlers, children and current and expectant
parents.” The commercial impression created by this mark, however, may be seen

5 Accessed at www.ahdictionary.com.
6 Judicial notice may be taken of dictionary evidence. University of Notre Dame du Lac v. J.
C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983); see also, TBMP §712.01 (3d. ed. rev. 2012).
7 In addition, two of them are owned by the same entity.
Serial No. 77949111

6

as sufficiently distinct from that of the mark SERAPHIN that confusion would be
avoided despite any overlap in the goods and services. In any event, we are not
inclined to second-guess the decisions of the examining attorney who indicates that
the commercial impression of the mark SERAFINA is as “a first name.”8 See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if
some prior registrations had some characteristics similar to [applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the board
or this court.”). Finally, we note that third-party registrations are generally
entitled to little weight in determining the strength of a mark because they are not
evidence that the mark is in actual use in the marketplace or that consumers have
been exposed to the mark. See Fort Howard Paper Co. v. Kimberly-Clark Corp., 221
USPQ 732 (TTAB 1984); and In re Hub Distributing Inc., 218 USPQ 284 (TTAB
1983).
Applicant argues that the final letter “e” in its mark affects its pronunciation
and that the verbal distinctions created thereby between the marks is significant.
We disagree. First, it is clear that there is no one correct pronunciation of a
trademark. In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969); In re
Lamson Oil Company, 6 USPQ2d 1041, 1042 n. 3 (TTAB 1987). Consumers may
view the final letter “e” in applicant’s mark as a “silent e” and pronounce the
“phine” as “fin.” In addition, even if consumers would pronounce the final syllable
in applicant’s mark as “feen,” there is little noticeable difference between that and

8 Examiner’s Brief, p. 12 (unnumbered).
Serial No. 77949111

7

the arguable pronunciation of the final syllable of registrant’s mark as “fin.” Slight
differences in pronunciation of the marks will not avoid a likelihood of confusion.
See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012)
(XCEED and X-Seed and design similar). Given the identity of the first eight
letters “S-E-R-A-P-H-I-N,” each suggesting the identical word “seraph” and its
pluralizations “seraphim” and “seraphin,” we do not believe the presence or absence
of a final letter “e,” or the possible difference in pronunciation between “feen” and
“fin” is likely to be noticed when recalling the marks in their entireties. On balance,
because the marks are visually similar and have the same connotations, they create
the same overall commercial impression despite the slight possible differences in
pronunciation. The first du Pont factor, that of the similarity of the marks, favors a
finding of likelihood of confusion.
B. Comparison of the Goods
We next turn our attention to a comparison of the similarity or dissimilarity
and nature of the goods and services described in the applications and registrations.
We base our evaluation on the goods and services as they are identified in the
registration and application. Octocom Systems, Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
It is settled that it is not necessary that the respective goods and services be
identical or even competitive in order to find that they are related for purposes of
our likelihood of confusion analysis. In re Martin's Famous Pastry Shoppe, Inc., 748
Serial No. 77949111

8

F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (bread and cheese related); In re Opus
One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001) (commercial relationship found
between restaurant services and wine). The issue is not whether consumers would
confuse the goods and/or services themselves, but rather whether they would be
confused as to their source. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Applicant seeks registration for its mark in Classes 25 and 35. We consider
whether applicant’s listed goods and services are related to the cited goods in the
context of each separate class. First, we analyze whether the goods are related in
Class 25.
Class 25
In class 25, applicant has applied to register its mark for maternity clothing.
The cited registration covers leather clothing (specifically, “leather blousons, leather
jackets, leather three quarters length coats, leather trousers, leather parkas,
leather coats”), as well as “pelisses,9 fur coats and jackets, and quilted vests” that
may or may not be made of leather. Applicant specifically excludes the clothing
items that have been listed in the registration from the identification of goods of its
application. However, because the identification of goods in the cited registration is
only limited to the material used to create the clothing, i.e., leather and fur, we
must treat the identification as being broad enough to encompass all goods of the
type listed, including maternity clothing made of leather (specifically blousons,
jackets, coats, trousers, and parkas) and maternity pelisses, fur coats and jackets,

9 “Pelisses” are long cloak or outer robes, “usually of fur or with a fur lining.” American
Heritage Dictionary at http://ahdictionary.com.
Serial No. 77949111

9

and quilted vests. “[W]here the goods in a cited registration are broadly described
and there are no limitations in the identification of goods as to their nature, type,
channels of trade or classes of purchasers it is presumed that the scope of the
registration encompasses all goods of the nature and type described, that the
identified goods move in all channels of trade that would be normal for such goods,
and that the goods would be purchased by all potential customers.” In re Elbaum,
211 USPQ 639, 640 (TTAB 1981). Accordingly, applicant’s identified maternity
wear is encompassed by the clothing listed in the cited registration and as such, the
goods are legally identical.
The examining attorney has also shown that it is not uncommon for
maternity clothes to be made of leather. The record includes copies of pages from
several online websites offering leather maternity clothing:
At http://www.usmagazine.com, an article discusses a
maternity fashion line from designer Heidi Klum that
includes leather pants and glitter tops;
At http://www.tummiesmaternity.com, there is an
advertisement for a maternity cropped “100% leather
jacket” for $54.80;
At http://thestir.cafemom.com, a short post identifies
“leather maternity leggings” designed by Heidi Klum,
apparently available for sale at A Pea in the Pod for
$550;10
At http://www.isabellaoliver.com, a maternity leather
jacket is advertised for sale for $609;
At http://encorematernity.com, a maternity quilted vest is
advertised for $39; and

10 These three examples were attached to the January 13, 2011 Office action.
Serial No. 77949111

10

At http://www.apeainthepod.com, a “faux fur trim
maternity vest” is available for $99.50.11
In addition, the examining attorney has shown that retailers offer both
leather or fur maternity clothing and non-leather maternity clothing through the
same website. For example:
At http://www.isabellaoliver.com, a leather maternity
jacket is advertised together with non-leather maternity
tops, pants, leggings, coats, tunics, camis, jeans and a
dress;
At http://maternity.apeainthepod.com, faux fur-trimmed
wool maternity peacoats, vests, and a jacket are
advertised together with non-leather maternity jeans and
pants; and
At http://encorematernity.com, quilted maternity vests
and non-quilted maternity pants and skirts are shown.
Finally, the examining attorney has made of record several third-party
registrations for marks that include maternity clothing and non-maternity clothing,
including leather clothing, in their identifications of goods. For example:

for a variety of clothing items including “maternity
tops” and “leather jacket” 12

ZEN FRIENDLY

for a variety of clothing items including “leather
belts, coats, headwear and jackets, and maternity
sleepwear”;13

11 These next three examples were attached to the November 15, 2012 Office action.
12 Reg. No. 3241445 registered May 15, 2007; Section 8 declaration accepted.
13 Reg. No. 3839026 registered August 24, 2010.
Serial No. 77949111

11

for a variety of clothing items including “leather
coats and jackets” and “maternity sleepwear”;14 and

for a variety of clothing items including “leather
belts and pants” and “maternity lingerie.”15

Copies of use-based, third-party registrations may serve to suggest that the goods
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 (TTAB 1993).
These websites and third-party registrations support the conclusion that
leather or fur-lined clothing is related to non-leather maternity clothing.
Applicant argues that confusion is unlikely because maternity wear is a
specialized area of the clothing industry and consumers are more likely to exercise
greater care in selecting maternity clothes than other types of clothing. Applicant
also suggests that registrant’s goods are expensive, luxury items that would be
purchased with care. However, applicant has not submitted evidence showing that
registrant’s goods are expensive, luxury items. As for its own goods, applicant’s

14 Reg. No. 3882802 registered November 30, 2010.
15 Reg. No. 3890068 registered December 14, 2010.
Serial No. 77949111

12

website, www.seraphine.com, lists two items of clothing, a “crossover vest” for $42
and a “front sash jacket” for $199. The price at which the third-party websites offer
leather maternity clothing items is equivalent; with the exception of the designer
leggings from Heidi Klum at $550 and the leather jacket offered by Isabella Oliver
for $609, the pricing for both applicant’s maternity clothing and the third-parties’
leather maternity clothing is relatively comparable. These prices are also not so
expensive that consumers are likely to exercise more than ordinary care in selecting
their purchases. As for the channels of trade, the evidence shows that applicant’s
and registrant’s goods are typically sold through the same or similar retail clothing
stores and online stores. In view of the above, the du Pont factors of the similarity
of the goods, channels of trade and class of purchasers favor a finding of likelihood
of confusion in class 25.
Class 35
Applicant’s online and retail store services in class 35 feature maternity
clothing. The cited registration covers leather and fur clothing, which may include
maternity clothing. Confusion is likely to occur “from the use of the same or similar
marks for goods, on the one hand, and for services involving those goods, on the
other.” TMEP § 1207.01(a)(ii) (8th ed. 2011). See also, In re Peebles Inc., 23
USPQ2d 1795 (TTAB 1992) (coats and retail outlets featuring camping equipment
held related); In re U.S. Shoe Corp., 8 USPQ2d 1938 (TTAB 1988) (cowboy boots
and retail clothing stores featuring boots, related); In re The United States Shoe
Corporation, 229 USPQ 707 (TTAB 1985) (clothing store services related to
uniforms). Thus, the cited mark could be used not only on related goods but also in
Serial No. 77949111

13

association with the sale of such goods. Accordingly, “[t]he respective marks will
have their only impact on the purchasing public in the same marketplace.” In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Applicant’s retail stores selling maternity clothing will likely impact the same
purchasers as registrant’s leather clothing, particularly any leather maternity
clothing, which may similarly be sold through retail stores, online, or in maternity
boutique clothing shops. Applicant has not provided any argument or evidence to
the contrary. The du Pont factor on relatedness of the goods and/or services
identified in the registration and application favors a finding of a likelihood of
confusion.
C. Balancing the factors.
Despite slight differences in visual presentations, overall the marks look
alike and are likely to carry equivalent pronunciations or vary only slightly. The
connotations of both marks evoke angelic creatures known as “seraphim” or
“seraphin,” words that are relatively uncommon in spoken English and arbitrary for
the goods and services at issue in this case. The goods are legally identical, likely to
be sold through similar trade channels and to the same classes of consumers.
Applicant’s retail and online store services are also related in that the goods at issue
would be sold at these outlets. Applicant’s registration of the mark SÉRAPHINE is
likely to cause confusion with the registered mark SERAPHIN, when used on or in
association with the listed goods and services.
Serial No. 77949111

14

Decision: The refusal to register applicant’s mark SÉRAPHINE is affirmed
as to International Classes 25 and 35. The application will proceed to registration
in International Class 9 in due course.