CHA Direct, Inc.

Trademark Trial and Appeal Board

Sep 12, 2008

No. 78664613 (T.T.A.B. Sep. 12, 2008)

Hearing: Mailed:
July 10, 2008 September 12, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re CHA Direct, Inc.
________

Serial No. 78664613
_______

James E. Schlesinger of Schlesinger, Arkwright & Garvey,
L.L.P. for CHA Direct, Inc.

Michael Webster, Trademark Examining Attorney, Law Office
102 (Karen, Strzyz, Managing Attorney).
_______

Before Hairston, Holtzman and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

CHA Direct, Inc. (“applicant”) filed an intent-to-use
application on the Principal Register for the mark TRES
JOLIE, in standard character format, for goods ultimately
identified as “ladies clothing, namely, sweaters, blouses,
jackets, pants and skirts,” in Class 25. The English
translation of TRES JOLIE is “very pretty.”1

1 During the prosecution of its application, applicant filed an
amendment to allege use, and amended its application to the
Supplemental Register.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78664613
2
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark is likely to
cause confusion with the following marks (owned by the same
registrant) both for “eyeglasses, sunglasses and eyeglass
frames,” in Class 9:
1. TRES JOLI;2 and,
2. TRES JOLIE.3
Our determination of likelihood of confusion 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 issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, 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

2 Registration No. 2239881, issued April 13, 1999 on the
Supplemental Register; Section 8 affidavit accepted. The
registration includes the statement that TRES JOLI means “very
pretty, very pleasing or very neat.”

3 Registration No. 3015549, issued November 15, 2005 under the
provisions of Section 2(f). The registration includes the
statement that TRES JOLIE means “very pretty, very pleasing or
very neat.”
Serial No. 78664613
3
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks”).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., supra. Applicant’s mark TRES JOLIE is
identical to the registered mark TRES JOLIE and virtually
identical the registered mark TRES JOLI. Moreover, we note
that both applicant and the registrant translated TRES
JOLIE (and TRES JOLI) to mean very pretty. In view
thereof, we find that the identity of the marks weighs
strongly in favor of finding that there is a likelihood of
confusion.
B. The similarity or dissimilarity and nature of the
goods and services.

Applicant is seeking to register its mark for ladies
clothing and the registrant’s marks are registered for
eyeglasses, sunglasses and eyeglass frames.
Serial No. 78664613
4
We begin our consideration of the respective goods
with the premise that, because the marks at issue are
identical, the extent to which the goods of applicant and
registrant must be related to support a finding of
likelihood of confusion is lessened. See In re Opus One
Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia
Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). It
is only necessary that there be a viable relationship
between the two to support a finding of likelihood of
confusion. In re Concordia Int’l Forwarding Corp., 222
USPQ at 356. Further, it is a general rule that goods and
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
encountered 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; and Time Warner
Serial No. 78664613
5
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
The Examining Attorney submitted 32 third-party
registrations, based on use in commerce, that include both
clothing and eyeglasses or sunglasses.4 “Third-party
registrations which cover a number of differing goods
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). See also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-1786 (TTAB 1993).
Also, the Examining Attorney submitted excerpts from
numerous websites showing that the women’s clothing and
eyeglasses and sunglasses were manufactured or branded by a
single source. A representative sample of the excerpts
include the following:

4 Registration No. 3041039 for the mark LUCKY BRAND JEANS is
registered for retail store services featuring a wide variety of
products including clothing and sunglasses. Thus, while it does
not necessarily suggest that clothing and eyeglasses and
sunglasses may emanate from a single source, it suggests that
those products may be sold by the same retailer.
Serial No. 78664613
6
1. JUST CAVELLI women’s clothing and eyewear
(couture.zappos.com);

2. MARC by Marc Jacobs women’s shoes and eyewear
(couture.zappos.com);

3. GIORGIO ARMANI women’s apparel and sunglasses
(bergdorfgoodman.com);

4. DIOR apparel and sunglasses
(bergdorfgoodman.com); and,

5. D&G DOLCE & GABBANA apparel and sunglasses
(neimanmarcus.com).

Applicant argues that the third-party registrations
should not be given any probative value because many of the
registrations are house marks or designer marks that are
commonly applied to many different types of goods and
services; and therefore, according to applicant, because
neither applicant’s, nor registrant’s marks are designer or
house marks, consumers would not be predisposed to
encounter the marks on multiple products.5 We are not
persuaded by applicant’s argument. First, not all of the
third-party registrations were designer or house marks.
Second, as demonstrated by the websites that have been made
of record, women’s clothing and sunglasses are products
that are generally labeled with designer and house marks.
The websites submitted by the Examining Attorney show that
designer and house marks are commonly placed on sunglasses

5 Applicant’s Brief, pp. 10-12.
Serial No. 78664613
7
and women’s clothing. In fact, the websites indicate that
clothing and sunglasses may be complementary products in
that women may purchase sunglasses or eyeglasses as a
fashion accessory. Accordingly, consumers would expect
that women’s clothing and sunglasses identified by the same
mark emanate from a single source.
Also, applicant relies on In re application of
Visibilia S.r.l. (S.N. 74310112) (TTAB Oct. 21, 1994,
unpublished) and Remington Licensing Corp. v. Gregory Dean
Shideler (S.N. 73690909) (TTAB July 7, 1995, unpublished)
for the proposition that clothing and eyewear are unrelated
products. However, applicant’s reliance on these cases is
misplaced. First, the issue of likelihood of confusion is
determined “from the probative facts in evidence. As so
often said, each case must be decided on its own facts.”
In re E. I. du Pont de Nemours & Co., 177 USPQ at 567.
To the extent that prior cases have any relevance, the
facts in those cases must be similar to the facts in the
case before us. Hyde Park Footwear Company, Inc. v.
Hampshire-Designers, Inc., 197 USPQ 639, 641 (TTAB 1977)
(“It follows that, to the extent that a prior decision
relied upon by opposer under the doctrine of stare decisis
depended for its conclusion upon particular facts that are
not duplicated in the instant proceeding, the prior
Serial No. 78664613
8
decision is irrelevant to the matter in hand”). See also
Playboy of Miami, Inc. v. John B. Stetson Co., 426 F.2d
394, 165 USPQ 686, 687 (CCPA 1970) (the Board improperly
relied on a line of cases in which the facts differed);
Merritt Foods Company v. Americana Submarine, 209 USPQ 591
597 (TTAB 1980).
In the Visibilia appeal, the Examining Attorney
submitted third-party registrations based on Section 44 of
the Trademark, not use in commerce. The Board held that
the third-party registrations based on Section 44 of the
Trademark Act, and not use in commerce, were incompetent to
establish that clothing and eyeglasses were associated with
a single source. Thus, based on the record, there was no
evidence that clothing and eyeglasses were related.
Likewise, in the Remington opposition, “[n]o testimony
or evidence is cited to support a finding in the present
case that these particular goods [opposer’s clothing and
applicant’s umbrellas, eyeglasses and sunglasses] are
sufficiently related for purposes of likelihood of
confusion.” Remington Licensing Corp. v. Gregory Dean
Shideler, p. 16.
In view of the foregoing, we find that the similarity
and nature of the goods weigh in favor of finding that
there is a likelihood of confusion.
Serial No. 78664613
9
C. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because there are no limitations as to channels of
trade or classes of purchasers in either the application or
the registrations, it is presumed that the registrations
and the application encompass all of the goods of the type
described in the description of goods, that the goods so
identified move in all channels of trade normal for those
goods, and that the products are available to all classes
of purchasers for the listed products. See In re Linkvest
S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211
USPQ 211 USPQ 639, 640 (TTAB 1981).
The website evidence submitted by the Examining
Attorney shows that the same retailers sell both clothing,
on the one hand, and eyeglasses and sunglasses, on the
other. For example:
1. Bergdorf Goodman advertises GIORGIO ARMANI and
DIOR apparel and sunglasses on the same web pages
(bergdorfgoodman.com);

2. The DA Designers Apparel website
(designersapparel.com) advertises GIORGIO ARMANI
sunglasses and apparel on the same web page;

3. Neiman Marcus advertises D&G DOLCE & GABBANA,
PRADA, JUICY COUTURE, VALENTINO, VERSACE, YVES
SAINT LAURANT and FENDI apparel and sunglasses on
different web pages. However, it advertises
MISSIONI and ROBERTO CAVALLI apparel and
sunglasses on the same webpage
(niemanmarcus.com);

Serial No. 78664613
10
4. The GUESS website (shop.guess.com) advertises
clothing and sunglasses on different web pages;
and,

5. The RALPH LAUREN website (ralphlauren.com)
advertises clothing and sunglasses on different
web pages.

As indicated above, clothing and eyeglasses and
sunglasses may be complementary products that are purchased
by the same consumers, as part of a coordinated outfit, in
a single shopping trip, from the same retailer. See In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Accordingly, we find that the channels of trade and classes
of consumers are factors that weigh in favor of finding a
likelihood of confusion.
D. The conditions under which and buyers to whom sales
are made (i.e., impulse vs. careful, sophisticated
purchasing).

Applicant contends, without any evidentiary support,
that purchasers of clothing and eyeglasses and sunglasses
are “sophisticated purchasers,” and that they are not
inclined to make impulse purchases.
Inherent in the very nature of
purchasing clothing, as well as
eyewear, is to examine the goods
closely and try them on, making sure
they fit on one’s body and face,
respectively. There is no eyewear
retailer without a mirror and no
clothing retailer without a dressing
room.6

6 Applicant’s Brief, p. 13.
Serial No. 78664613
11

Also, applicant asserts that eyeglasses and sunglasses are
expensive and essentially custom made or fitted for the
purchaser.7
As we indicated above, there are no restrictions or
limitations in the description of applicant’s goods or the
goods in the cited registrations. Therefore the
description of goods in the application and the
registrations are broad enough to encompass inexpensive
clothing, eyeglasses and sunglasses which may be sold in
discount stores to consumers who may not exercise a high
degree of care. Accordingly, the conditions under which
sales are made is a likelihood of confusion factor that
weighs in favor of finding that there is a likelihood of
confusion.
E. The strength of the registered marks.
Applicant contends that the marks TRES JOLIE and TRES
JOLI (translated into English as “very pretty”) are
descriptive or laudatory terms, and therefore they are
entitled to a narrow scope of protection or exclusivity of
use. In fact, applicant points out that Registration No.
3015549 for the mark TRES JOLIE is registered on the
Principal Register under the provisions of Section 2(f) and

7 Applicant’s Brief, p. 14.
Serial No. 78664613
12
that Registration No. 2239881 for the mark TRES JOLI is
registered on the Supplemental Register, and therefore,
according to applicant, the registrant has conceded that
the marks are descriptive.8
TRES JOLI and TRES JOLIE are laudatory terms. The
registration of TRES JOLI on the Supplemental Register is
an admission that the term is descriptive. 9 Quaker State
Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172
USPQ 361, 363 (CCPA 1972); In re Consolidated Foods Corp.,
200 USPQ 477, 478 n.1 (TTAB 1978). On the other hand, the
registration of TRES JOLIE on the Principal Register is
prima facie evidence of the validity, or distinctiveness of

8 We note that applicant is not attacking the validity of the
registered marks. It is arguing that the registered marks are
weak, and therefore entitled to only a narrow scope of protection
or exclusivity of use.
9 Applicant also contends that the filing of an application under
the provisions of Section 2(f) is an admission that the mark is
not inherently distinctive. (Applicant’s Brief, pp. 4-5). See
also Yamaha International v. Hoshino Gakki, 840 F.2d 1572, 6
USPQ2d 1001, 1005 (Fed. Cir. 1988) (when application is initially
filed or subsequently amended to Section 2(f), descriptiveness is
conceded); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990).
However, an applicant may argue the merits of an examining
attorney’s refusal and, in the alternative, claim that the matter
sought to be registered has acquired distinctiveness under §2(f).
Unlike the situation in which an applicant initially seeks
registration under §2(f) or amends its application without
objection, the alternative claim does not constitute a concession
that the matter sought to be registered is not inherently
distinctive. See In re E S Robbins Corp., 30 USPQ2d 1540 (TTAB
1992); In re Professional Learning Centers, Inc., 230 USPQ 70, 71
n.2 (TTAB 1986). Because the prosecution history of the TRES
JOLIE registration (Registration No. 3015549) has not been made
of record, we cannot draw any inferences from the fact that it
was registered under the provisions of Section 2(f).
Serial No. 78664613
13
the registered mark, and that presumption applies even
though the mark is registered under the provisions of
Section 2(f). Moreover, so long as the cited registrations
are valid, we are obligated to determine the issue of
likelihood of confusion by analyzing the du Pont factors
while keeping in mind that the level of descriptiveness may
influence our conclusion as to whether confusion is likely.
See In re Smith and Mehaffey, 31 USPQ2d 1531, 1533 (TTAB
1994).
In support of its argument that TRES JOLIE is a weak
mark that is entitled to a narrow scope of protection,
applicant submitted a copy of the following items:
1. Application Serial No. 77369548 for the mark
“Tres Jolie” and design for “hair combs,” “comb
cases,” “combs” and “hairbrushes”;

2. Registration No. 3352433 for the mark TRÈS JOLIE
DAY SPA LLC EXPERIENCE THE DIFFERENCE and design
for “health spa services, namely, cosmetic body
care services”; and,

3. Application Serial No. 77097615 (now Registration
No. 3400809) for the mark TRES JOLIE and design,
shown below, owned by applicant, for “ladies
jackets, pants, shirts, sweaters, dresses and
skirts.”

Serial No. 78664613
14
With respect to the third-party application and
registration, it is the evidence of third-party use, not
registration that is relevant to show that a mark is weak.10
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). Applicant has
submitted no evidence that either “Tres Jolie” and design
for “hair combs,” “comb cases,” “combs” and “hairbrushes”
(Serial No. 77369548) or TRÈS JOLIE DAY SPA LLC EXPERIENCE
THE DIFFERENCE and design for “health spa services, namely,
cosmetic body care services” (Registration No. 3352433) are
actually used by third parties, that they are promoted or
that they are recognized by consumers. “[W]here the record
includes no evidence about the extent of [third-party] uses
. . . [t]he probative value of this evidence is thus
minimal.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin, 73 USPQ2d at 1693, quoting Han Beauty, Inc. v.
Alberto-culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1561
(Fed. Cir. 2001) (emphasis in the original).
With respect to applicant’s registration for the mark
TRES JOLIE and design set forth above, we readily admit
that it is troublesome to refuse registration when

10 In any event, a pending application is evidence only that the
application was filed on a certain date. It is not evidence of
use of the mark. See Nike, Inc. v. WNBA Enterprises LLC, 85
USPQ2d 1187, 1193 n.8 (TTAB 2007).
Serial No. 78664613
15
applicant already owns a registration for a similar mark
for identical goods. However, in Registration No. 3400809,
applicant disclaimed the exclusive right to use “Tres
Jolie.” In view of the disclaimer and applicant’s
contention that the term “Tres Jolie” is descriptive, the
design portion of the mark may be treated as the dominant
portion of the mark. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of the
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties”). Thus,
applicant’s two TRES JOLIE marks are different.
In any event, each case must be decided on its own
merits based on the evidence of record. In re E. I. du
Pont de Nemours & Co., 177 USPQ at 567; In re Sunmarks
Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).
We obviously are not privy to the
record in the files of the registered
marks and, in any event, the issuance
of a registration(s) by an Examining
Attorney cannot control the results of
another case.

In re Sunmarks Inc., 32 USPQ2d at 1472. See also In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001) (“Even if some prior registrations had
Serial No. 78664613
16
some characteristics similar to Nett Designs’ application,
the PTO’s allowance of such prior registrations does not
bind the Board or this court. . . . the Board . . . must
assess each mark on the record of public perception
submitted with each application”).
Because the term TRES JOLIE is a laudatory term, we
find that the relative weakness of the mark is a factor
that weighs against finding that there is a likelihood of
confusion.
F. Balancing the factors.
Even though the registered marks may be weak, they are
still entitled to protection against the registration of
the same or similar marks for related goods. King-Kup
Candies, Inc. v. King Candy Co., 288 F.2d 944, 129 USPQ
272, 273 (CCPA 1961); Maybelline Company v. Matney, 194
USPQ 438, 440 (TTAB 1977). Therefore, in view of the
identity of the marks, and the similarity of the goods, and
the identity of the channels of trade and classes of
consumers, we find that applicant’s mark TRES JOLIE for
“ladies clothing, namely, sweaters, blouses, jackets, pants
and skirts” is likely to cause confusion with the marks
TRES JOLI and TRES JOLIE both for “eyeglasses, sunglasses
and eyeglass frames.”
Decision: The refusal to register is affirmed.