Charles & Keith International Pte Ltd

Trademark Trial and Appeal Board

Mar 26, 2013

No. 79094940 (T.T.A.B. Mar. 26, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Charles & Keith International Pte Ltd
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Serial No. 79094940
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Christina M. Licursi of Wolf, Greenfield & Sacks, P.C. for Charles & Keith
International Pte Ltd.

Patty Evanko, Trademark Examining Attorney, Law Office 117 (Brett J. Golden,
Managing Attorney).
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Before Kuhlke, Kuczma and Gorowitz, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Charles & Keith International Pte Ltd, (“applicant”), appeals from the final
refusal to register the following mark in the stylized form shown below:

for the following goods and services as amended:
Spectacles, eyeglasses; sunglasses; chains, cords, frames
and cases for the aforesaid goods; magnetic encoded cards,
namely, gift cards with stored value and customer loyalty
Serial No. 79094940

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cards; credit and debit cards; electronic calculators; cases,
sacks, bags, covers and clips; all for use with electronic
devices, mobile telephones, MP3 players, computers,
personal digital assistants; mouse pads; wrist rests for
use with computers in Class 9
Jewelry, costume jewelry, necklaces, bracelets, earrings;
medallions; horological and chronometric instruments,
wrist watches; key rings of precious metal; cuff links,
ornamental pins, tie clips, tie pins, precious metals and
their alloys and goods in precious metals or coated
therewith, not included in other classes, namely, charms
in precious metals or coated therewith in Class 14
Handbags for ladies and men; Articles made of leather or
imitation leather, namely, cases, bags, beach bags,
traveling bags, pouches in the nature of bags, card cases,
namely, business card cases and credit-card cases made of
leather or imitation leather; leather and imitations of
leather, umbrellas, handbags, briefcases, purses, purses
of precious metals; traveling trunks, wallets, coin purses,
key cases, leather shoulder belts in Class 18
Footwear; socks and stockings; head scarves, neck
scarves, shoulder scarves, shawls, ties, bow-ties, gloves,
foulards, headwear, headgear, footwear for men and
women, shoes, slippers, boots, lingerie, brassieres,
panties, lingerie tops, undershirts, underpants; skirts,
dresses, shorts; blouses, tee-shirts, poloshirts, shirts,
cardigans, chemises, vests, blouses, trousers, pants,
neckties, coats, wind resistant jackets and wind resistant
tops, sweaters, pullovers, waistcoats, jackets, overcoats,
blazers, hunting jackets, gabardines, bermudas, ponchos,
stoles, hats, caps, suspenders, neckerchiefs, pajamas,
mittens, bathing costumes, blousons, bathrobes, sports
footwear, tracksuits, ready-made linings for clothing,
namely, finished textile linings for clothing, swim wear,
thermal jackets, thermal underclothing, belts for clothing,
bathing trunks, beach shoes, boots, sports shoes,
underwear, sportsclothing, namely, shorts, shirts, and
pants in Class 25
The bringing together, for the benefit of others, of a
variety of goods, enabling customers to conveniently view
and purchase those goods in a retail store, in a wholesale
Serial No. 79094940

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outlet or from a general merchandise catalogue by mail
order or from a general merchandise website on the global
or local telecommunications networks in the field of
clothing, leather goods, jewelry, footwear, headgear,
eyewear, electronic goods, computer peripherals,
accessories for use with computers and electronic goods;
compilation of mailing lists; ordering services by means of
mail, telephone and all other communication and
telecommunication, direct mail advertising, business
advisory and business management services, advertising
services, display services for merchandise, publicity
services, marketing and promotional services, market
analysis and research, import/export agencies,
procurement, namely, buying of goods in the field of
clothing, leather goods, jewelry, footwear, headgear,
eyewear, electronic goods, computer peripherals,
accessories for use with computers and electronic goods on
behalf of a business, window dressing; organization and
supervision of incentive schemes, loyalty schemes and
bonus schemes for others; business services for franchises,
namely, offering business management assistance in the
establishment of a retail store; provision of business
assistance and business supports, namely, advice and
consultancy in the operation and establishment of
franchises; management of business projects for others
relating to franchise; marketing and business
developments of franchise; provision of business
information relating to franchise in Class 35.1
The examining attorney issued a final refusal to register the mark pursuant
to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) in all Classes, citing the
following two Registrations, owned by Montgomery Ward, Inc. as reflected in the
Office records, as a bar to registration:

1 Application Serial No. 79094940 filed on December 17, 2010, under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f, based on International Registration No. 1070666 dated
December 17, 2010. It is noted that the identification of goods in Class 25 listed in the
USPTO’s Trademark Status and Document Retrieval electronic database does not reflect
the amendment submitted in applicant’s Request for Reconsideration and accepted in the
Request for Reconsideration Denied issued May 8, 2012. The listing of goods in Class 25 set
forth above reflects the amendment.
Serial No. 79094940

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Registration No. 1334269
Mark: CHARLES KEATH, LTD. (typed form)2
For: general merchandise mail order catalogs in Class 163

Registration No. 2125203
Mark: CHARLES KEATH (typed form)
For: mail order retail catalog services featuring clothing,
furniture, home furnishings and accessories, dining room
items and kitchenware, bedroom linens and accessories,
patio, garden and yard furnishings, stationery, art prints,
jewelry and leather goods in International Class 35.4
After the refusals were made final, applicant appealed and filed a request for
reconsideration which was denied. Applicant and the examining attorney have filed
briefs. For the reasons set forth below, the refusals to register are affirmed.
Likelihood of Confusion
Our determination under § 2(d) is based on an analysis of all 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 Co., 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 services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).

2 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings.
3 Registration No. 1334269 issued May 7, 1985; renewed.
4 Registration No. 2125203 issued December 30, 1997; renewed.
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A. Similarity of the Goods/Services and Channels of Trade
We first consider the second and third du Pont factors, namely, the similarity
of the goods and services, and their channels of trade. It is well-settled that the
issue of likelihood of confusion between applied-for and registered marks must be
determined on the basis of the goods and services as they are identified in the
involved application and registration. Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Applicant’s services in Class 35 include “the bringing together . . . of a variety
of goods, enabling customers to conveniently view and purchase those goods . . .
from a general merchandise catalogue by mail order . . . in the field of clothing,
leather goods, jewelry, footwear, headgear, eyewear, electronic goods, computer
peripherals, accessories for use with computers and electronic goods.” Such services
are virtually identical to the “mail order retail catalog services featuring clothing,
furniture, home furnishings and accessories, . . . jewelry and leather goods” in Class
35 set forth in cited Registration No. 2125203. Inasmuch as applicant’s services
include offering goods via a “general merchandise catalogue by mail order” they are
also closely related to the mail order catalogs in cited Registration No. 1334269.
Confusion is also likely between applicant’s goods in Classes 14, 18 and 25
and the mail order retail catalog services in Registration No. 2125203 particularly
where registrant’s mail order catalog services feature some of the same goods as
recited in applicant’s application and sold in applicant’s stores, namely, jewelry,
leather goods and clothing. It is well recognized that confusion in trade is likely to
occur from the use of similar or the same marks for goods on the one hand and for
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services which deal with or are related to those goods on the other. Steelcase Inc. v.
Steelcare Inc., 219 USPQ 433, 435 (TTAB 1983). See also Safety-Kleen Corp. v.
Dresser Industries, Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975).
At least some of applicant’s goods in Class 9, namely, sunglasses, and chains,
cords, frames and cases for sunglasses, are the type of goods that one could expect to
be offered for sale in the general merchandise mail order catalogs of cited
Registration No. 1334269, and sold in connection with the mail order retail catalog
services of cited Registration No. 2125203 which recites other personal use items
such as clothing, jewelry and leather goods. See In re Hyper Shoppes, 837 F.2d 463,
6 USPQ2d 1025, 1025 (Fed. Cir. 1988) (“retail grocery and general merchandise
store services” would include sale of “wooden and upholstered furniture” recited in
application). Additionally, given the popularity of gift cards offered by all types of
retail establishments, applicant’s gift cards with stored value in Class 9 are a
product that potential purchasers would expect to be offered by registrant’s mail
order retail catalog services.
Applicant admits that there is some overlap between the mail order catalog
services offered by applicant and those covered by the cited registrations. However,
with respect to applicant’s goods and other services, applicant argues that the
distinction between those goods and services is more substantial, especially in light
of the differences in the marks.5 In support of this argument, applicant points to

5 See Applicant’s Appeal Brief p. 11.
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previously unsubmitted Exhibits C and D which accompanied its Appeal Brief.6
Generally, any materials not previously made of record during prosecution of the
application are untimely if submitted for the first time after the appeal is filed. See
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). Evidence submitted after appeal,
without a granted request to suspend and remand for additional evidence, see
TBMP § 1207.02 (3d ed. rev. 2012), may be considered by the Board, despite its
untimeliness, if the nonoffering party (1) does not object to the new evidence, and
(2) discusses the new evidence or otherwise affirmatively treats it as being of record.
TBMP § 1207.03. Although the examining attorney did not object to the late filed
evidence, she did not discuss it or otherwise treat it as being of record. Accordingly,
Exhibits C and D attached to Applicant’s Appeal Brief are untimely and have not
been considered.7
In determining the similarity of applicant’s and registrant’s goods and
services, it is sufficient if likelihood of confusion for each Class of goods and services
is established for any item encompassed by the identification of goods or recitation
of services for that Class. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409
(TTAB 2010) citing Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981). Accordingly, we find that applicant’s

6 See Applicant’s Appeal Brief p. 11, footnote 1.
7 We note that Exhibits C and D, even if considered, would not change the result. Whether
or not registrant’s mail order services are for the sale of third-party products while
applicant’s services are associated with the sale of products that bear applicant’s mark, as
argued by applicant, likelihood of confusion must be determined on the basis of the services
as they are identified in the subject application and cited registration. Inasmuch as the
identifications of services do not restrict the respective mail order services to certain
channels of trade or house brands, the services and trade channels are identical.
Serial No. 79094940

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services in Class 35 and the services in Registration No. 2125203 are identical in
part inasmuch as both constitute mail order catalog services featuring many similar
types of goods. Additionally, applicant’s goods in Classes 9, 14, 18 and 25 are the
same type of goods, or closely related to those goods, offered in connection with the
catalogs and mail order services in the cited Registrations.
Given that the goods and services are legally identical and otherwise so
closely related and there is no limitation as to trade channels or classes of
purchasers in the description of goods and services in either the application or the
cited registrations, we may presume that the goods travel in the same channels of
trade, and are available to the same classes of purchasers. See In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst.,
101 USPQ2d 1022, 1028 (TTAB 2011); and In re Smith & Mehaffey, 31 USPQ2d
1531, 1532 (TTAB 1994).
In view of the legally identical and highly related nature of the goods and
services set forth in the application and cited registrations, and the similar trade
channels and customers, the du Pont factors of the similarity of the goods and
services, trade channels and customers, favor a finding of likelihood of confusion.
B. Similarity of the Marks
In a likelihood of confusion determination, the marks are also compared for
similarities in their appearance, sound, meaning or connotation and commercial
impression. du Pont, 177 USPQ at 567; TMEP §1207.01(b).
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Looking at applicant’s CHARLES & KEITH mark and registrant’s CHARLES
KEATH marks, they are similar in appearance. Both marks begin with the name
CHARLES and consist of two words. The single letter difference in spelling
between KEITH and KEATH as well as the ampersand symbol in applicant’s mark,
are only likely to be distinguishing if the marks are compared side-by-side.
However, the test of likelihood of confusion 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 their entireties that confusion as to the source of
the goods or services offered under the respective marks is likely to result. The
focus is on the recollection of the average purchaser who normally retains a general
rather than specific impression of trademarks. See Coach Services Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Recot, Inc.
v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); and Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Only when the
applicant’s mark and the registrant’s mark are visually compared in a side-by-side
comparison, does the slightly different spelling of KEATH become apparent.
Purchasers who retain only a general impression of trademarks, are not likely to
notice this slight distinction or the nondistinctive ampersand in applicant’s mark,
and will mistakenly assume that the marks identify a common source.
Applicant concedes that the names KEITH and KEATH are phonetic
equivalents.8 Thus, the marks also sound nearly identical. The ampersand symbol

8 Applicant’s Appeal Brief pp. 5-6.
Serial No. 79094940

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in applicant’s mark, pronounced as “and,” does little to avoid confusion where the
two other components in applicant’s mark have the identical pronunciation to the
cited marks. See Wenatchee-Beebe Orchard Co. v. H.W. Butler & Bro., Inc., 126
USPQ 296 (TTAB 1960) (“B and B” when spoken is substantially similar to
opposer’s mark “BEEBE”; differences in significance and appearance are lost when
the marks are spoken). This similarity in sound is significant as similarity in sound
alone may be sufficient to support a finding of likelihood of confusion. See RE/MAX
of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980) REMACS and
RE/MAX indistinguishable in sound); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ
469, 471 (TTAB 1975) (FINGER•MAGIC and RINGA•MAJIGS are substantially
similar phonetically); In re Chesebrough-Pond’s Inc., 161 USPQ 310, 311 (TTAB
1969) (CRÈME LE HOT and O-LI-HOT look alike and sound very much alike); and
TMEP §1207.01(b)(iv).
Based on the inclusion of an ampersand in its mark, applicant argues the
marks have different commercial impressions. According to applicant, the joinder of
two common first names, “Charles” and “Keith,” with the ampersand, creates the
impression that there are two individuals named “Charles” and “Keith” that are
somehow affiliated with the products and services offered under applicant’s mark.
On the other hand, applicant contends, the spelling and placement of KEATH in
registrant’s mark indicates a surname, thereby creating an entirely distinct
impression from applicant’s mark.9 Contrary to applicant’s argument, to the extent

9 See Applicant’s Appeal Brief pp. 5-6.
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that applicant’s and registrant’s marks both identify a person or persons, they have
a similar connotation. In addition to the fact that there is no evidence indicating
that “Keath” is a surname, we find that the overall similarity in sound and
appearance between applicant’s mark and the cited marks outweighs the minimal
significance or connotation of the ampersand in applicant’s mark. Even in the event
that “Keath” is indicative of a surname, this does not overcome the strong similarity
in sound and the fact that those hearing the marks would not be able to distinguish
“Keith” from “Keath.”
Turning to the CHARLES KEATH LTD mark in Registration No. 1334269,
the inclusion of the designation “LTD” in the mark conveys essentially the same
meaning or connotation as the CHARLES KEATH mark. The term LTD, like the
abbreviations “Inc.,” “Co.,” and “Corp.,” is a business entity indicator which is used
to signify the name of a business. Most businesses include at least one of these
indicators in their name. It has long been recognized that business entity indicators
are generic and are without trademark significance. See In re Patent & Trademark
Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998) (“Inc.” merely indicates the type
of entity which performs the services, and thus has no service mark significance)
and In re E.I. Kane, Inc., 221 USPQ 1203, 1205 (TTAB 1984) (term “Inc.” has no
service mark significance). The presence of commonly used generic business
indicators in conflicting marks cannot either add to or lessen any likelihood of
confusion that otherwise exists. See 4 J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 23:49 (4th ed. March 2013). Therefore, the
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addition of “LTD” to “CHARLES KEATH” does not diminish the similarity of
applicant’s mark and the CHARLES KEATH LTD mark.
Similarity in any one of the elements (appearance, sound or meaning) may be
sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987); and
TMEP §1207.01(b) (October 2012). In this case, any differences between the marks
are more than overcome by their similarities in sound and appearance.
In a further attempt to distinguish its mark from the cited marks, applicant
contends the weakness of the marks in the cited registrations limits them to a
narrow scope of protection that does not encompass applicant’s mark. To support
the alleged weakness of the cited marks, applicant relies on five third-party
registrations arguing the registrations evidence “widespread” third-party use of
“Charles” marks for similar goods and services.10 According to applicant, this
crowded field of “Charles” marks indicates no one party is entitled to exclusive use
of “Charles” and requires that the cited marks be narrowly construed.11
Applicant’s heavy reliance on these third-party registrations is misplaced.
While evidence of third-party usage of similar marks on similar goods and services
is relevant to show the weakness of a mark, third-party registrations are not

10 See attachments to October 11, 2011 Response to Office Action. Although applicant
submitted six registrations, one of the registrations, namely, Registration No. 3054682, has
since been cancelled for failure to file the required declaration use under § 8 of the
Trademark Act. Registration Nos. 3737068 and 3496232 were filed under § 66(a) of the
Trademark Act and are based on ownership of an International Registration rather than
use in commerce.
11 See Applicant’s Appeal Brief pp. 9-10.
Serial No. 79094940

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evidence that the marks depicted therein are in use or that the public is aware of
them, and they are thus of no probative value as to the weakness of the cited marks.
See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545
(Fed. Cir. 1992). However, third-party registrations may be submitted to
demonstrate the meaning of a word which comprises a mark, or a portion thereof, in
the same way dictionary definitions are used to illustrate how a term is perceived in
the trade or industry. See The Institut National des Appellations D'Origine v.
Vintners International Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir.
1992) and In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
Despite the fact that the third-party registrations are not probative of third-
party use, they reveal that the cited marks are the only marks other than
applicant’s mark which combine the name “Charles” with a name that is similar in
sound to “Keith” (or “Keath”). In view of the foregoing, these third-party
registrations do not impact the meaning of applicant’s mark or the cited mark, nor
do they support a finding that the cited marks are weak or otherwise entitled to a
narrow scope of protection.
Conclusion
Where the goods and services of the applicant and cited registrant are similar
and/or closely related as they are in this case, the degree of similarity between the
marks required to support a finding of likelihood of confusion is not as great as
would be required with diverse goods. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d
1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004) also see In re J.M. Originals Inc., 6
USPQ2d 1393, 1394 (TTAB 1987). Thus, as discussed above, applicant’s mark is
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more similar to the cited marks than dissimilar. We therefore find that, taken as a
whole, the similarities in sound and appearance between applicant’s mark and the
cited marks outweigh the dissimilarities such that purchasers who retain a general
impression of trademarks are likely to believe that applicant’s CHARLES & KEITH
mark identifies the same source as the CHARLES KEATH and CHARLES KEATH
LTD marks.

Decision: The refusal to register the mark in application Serial No.
79094940 under § 2(d) of the Trademark Act is affirmed.