Celebrity Signatures Inter-national, Inc.

Trademark Trial and Appeal Board

Sep 6, 2006

No. 78357961 (T.T.A.B. Sep. 6, 2006)

Mailed: September 6, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Celebrity Signatures International, Inc.
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Serial No. 78357961
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Gerald M. Kraai of Lathrop & Gage for Celebrity Signatures
International, Inc.

Marc Leipzig, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
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Before Walters, Holtzman and Rogers, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Celebrity Signatures International, Inc. has filed an
application to register the standard character mark SHEER
INDULGENCE on the Principal Register for “wigs, hairpieces,
and add-in and add-on hair accessories constructed primarily
of synthetic and/or human hair,” in International Class 26.1
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.

1 Serial No. 78357961, filed January 27, 2004, based on an allegation of
a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 78357961

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1052(d), on the ground that applicant’s mark so resembles
the mark SHEER INDULGENCE, previously registered for ladies’
pantyhose and hosiery,2 that, if used on or in connection
with applicant’s goods, it would be likely to cause
confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
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

2 Registration No. 1103097 issued September 26, 1978, to Kayser-Roth
Corporation, in International Class 25. [Renewed; Section 15 affidavit
acknowledged.]
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Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
The examining attorney states that the marks are
identical and contends that the goods are closely related
and often supplied by the same businesses; and, thus, the
goods travel in the same channels of trade to the same
classes of purchasers. In support of his position, the
examining attorney submitted copies of five third-party
registrations that include wigs and hair accessories and
hosiery among the identified goods, and copies of excerpts
from various third-party websites marketing, in close
proximity to one another, wigs and hair accessories and
hosiery. In view of the website evidence, the examining
attorney contends that “parties supplying wigs and hosiery
are particular types of clothing and/or costume stores, not
massive retailers supplying everything from dog food to
motor oil to video games” (brief, unnumbered p. 5).
Applicant does not dispute that the marks are
identical, but contends that the goods are not related,
noting that the products are diverse and used for very
different purposes. Applicant argues that the third-party
registrations in the record are of little evidentiary value
to show consumer perception; that the mere five
registrations of record are not sufficient to establish that
Serial No. 78357961

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consumers will assume the goods come from the same source;
and that the mere fact that such goods may be sold in the
same store does not mean that consumers will assume the
goods come from the same manufacturer, noting that three of
the registrants are retailers and two of the retailers are
nationally recognized chains that bring together under a
single roof the diverse goods of many manufacturers.
Applicant argues that the website evidence is inapposite for
the same reason, stating that websites operate like
department stores by bringing together a myriad of products
for consumers’ convenience. Applicant submitted copies of
third-party registrations for the marks MCDONALDS and
BUDWEISER for a wide variety of goods.
Applicant contends, further, that the trade channels
differ because applicant sells its products through “beauty
salons, wholesale beauty supply distributors, wig stores and
websites that only offer wigs,” whereas “registrant’s goods
may be found at grocery stores, drug stores, mass-market
discount stores and websites offering a variety of goods.”
Finally, applicant contends that its wigs are bought mainly
following medical treatment. The wigs are relatively
expensive, costing around $100, and the wigs are purchased
with care after great consideration. Applicant states that,
“in contrast, ladies’ pantyhose are fungible goods,
purchased on impulse, with little to no consideration
Serial No. 78357961

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exercised in their purchase” (brief, p. 8), and that
registrant’s hosiery is relatively inexpensive. Applicant
submitted evidence from two Internet websites, one providing
information about the registrant, the other, showing an
advertisement for registrant’s hosiery on a Burlington
website.3
There is no question that the marks involved in this
case are identical. It is well established that “[i]f the
marks are the same or almost so, it is only necessary that
there be a viable relationship between the goods or services
in order to support a holding of likelihood of confusion.”
In re Concordia International Forwarding Corp., 222 USPQ
355, 356 (TTAB 1983).
Thus, we turn to consider the goods involved in this
case. We note first that, contrary to applicant’s arguments
about the trade channels, classes of purchasers and care
consumers are likely to exercise in purchasing the
respective products, the question of likelihood of confusion
must be determined based on an analysis of the goods or
services recited in applicant’s application vis-à-vis the
goods or services recited in the registration, rather than
what the evidence shows the goods or services actually are.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1

3 Applicant also submitted an excerpt from www.jockey.com wherein
hosiery, underwear and lingerie are advertised.

Serial No. 78357961

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USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom
Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp.
v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
In this case, there are no restrictions in the
identifications of goods and so we must assume that the
identified wigs and hair accessories and hosiery travel
through all the normal channels of trade for such products
to the usual purchasers of such products. These are both
largely general consumer items that will certainly travel
through overlapping, if not the same, trade channels.
It is also a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
party’s goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein. Thus, our
inquiry does not end with the fact, noted by applicant, that
these are different products used for different purposes.
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It is true, as also noted by applicant, that the mere
presence of items in a department store or on a department
store-like retail website is insufficient, alone, to warrant
a conclusion that goods are related. However, the five
website excerpts submitted by the examining attorney show
wigs and hosiery marketed closely together. Following are
several examples:
www.daniellesboutique.com - The home page contains
the following opening statement: “If you are a
woman, or just play one as [on] TV, shop with us
for quality wigs, lingerie, shoes and much more at
affordable prices.” The six product category
links on the left-hand side of the page include
“wigs,” “hosiery” and “lingerie.”

www.studiolites.com - the homepage has eight links
centered on the page, the first two of which are,
side-by-side, “wigs” and “hosiery.”

www.carlas.com - A picture of the shop on the home
page bears the caption “wigs, panties and hosiery”
and shows these three items displayed together.

We find that this evidence, supported by the third-party
registration evidence, shows a sufficient relationship
between the respective goods that confusion as to source is
likely if such goods are identified by identical marks.
Therefore, we conclude that in view of the identity of
applicant’s mark, SHEER INDULGENCE, and registrant’s mark,
SHEER INDULGENCE, their contemporaneous use on the goods
involved in this case is likely to cause confusion as to the
source or sponsorship of such goods.
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To the extent that any doubts might exist as to the
correctness of this conclusion, we resolve such doubts
against applicant. See Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992); Ava Enterprises Inc. v. Audio Boss USA Inc., 77
USPQ2d 1783 (TTAB 2006); Baseball America Inc. v. Powerplay
Sports Ltd., 71 USPQ2d 1844 (TTAB 2004).
Decision: The refusal under Section 2(d) of the Act is
affirmed.