Circa Footwear

Trademark Trial and Appeal Board

Aug 16, 2002

No. 75682656 (T.T.A.B. Aug. 16, 2002)

Mailed: August 16, 2002

Paper No. 15
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Circa Footwear
________

Serial No. 75/682,656
_______

Jeffrey L. Van Hoosear of Knobbe, Martens, Olson & Bear,
LLP for Circa Footwear.

Ramona F. Ortiga, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Chapman, and Bottorff, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:

Circa Footwear (a California corporation) filed on
April 14, 1999 an application to register the mark
CIRCAFOOTWEAR for “clothing, headwear and footwear,” based
on applicant’s assertion of a bona fide intention to use
the mark in commerce. Applicant later amended the
identification of goods to “athletic footwear”; and filed
an amendment to allege use, accepted by the Examining
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/682656
2
Attorney, asserting a date of first use and first use in
commerce of April 1999.
The Examining Attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark, when applied to its
identified goods, so resembles the registered mark shown
below

for “belts,”1 as to be likely to cause confusion, mistake or
deception.
When the refusal was made final, applicant appealed.
Briefs have been filed. An oral hearing was requested and
scheduled, but applicant then withdrew its request for an
oral hearing.
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods

1 Registration No. 1,202,134, issued July 20, 1982, Section 8
affidavit accepted, Section 15 affidavit acknowledged, renewed.
Ser. No. 75/682656
3
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997); and In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).
Turning to a consideration of the respective goods, it
is well settled that goods need not be identical or even
competitive to support a finding of likelihood of
confusion; it being sufficient that the goods are related
in some manner or that the circumstances surrounding their
marketing are such that they would likely be encountered by
the same persons under circumstances that could give rise
to the mistaken belief that they emanate from or are
associated with the same source. See In re Peebles Inc.,
23 USPQ2d 1795, 1796 (TTAB 1992); and Monsanto Co. v.
Enviro-Chem Corp., 199 USPQ 590, 596 (TTAB 1978).
In support of the refusal to register, the Examining
Attorney has made of record copies of pages from several
catalogs (e.g., Cabela’s, Patagonia, and the Jack Nicklaus
Collection), and copies of several Internet web sites
(e.g., Fogdog Sports, REI, and Foot Locker) showing that
the same entity sells both athletic footwear and belts. In
addition, the Examining Attorney submitted over forty
third-party registrations which issued on the basis of use
Ser. No. 75/682656
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in commerce, to demonstrate the close relationship between
athletic footwear and belts, by showing that a single
entity has registered a single mark for goods including
both footwear and belts.
Third-party registrations are not evidence of
commercial use of the marks shown therein, or that the
public is familiar with them. Nevertheless, third-party
registrations which individually cover a number of
different items and which are based on use in commerce have
some probative value to the extent they suggest that the
listed goods emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, footnote 6 (TTAB 1988).
The Examining Attorney also submitted several
representative excerpted articles retrieved from the Nexis
database to show that athletic footwear is commonly worn as
casual footwear, and not just for athletic or sports
events, and belts are a normal accessory for casual wear.
We agree with applicant that there is no per se rule
that goods in the same general field and bearing the same
or similar mark must invariably result in a likelihood of
confusion. Rather, cases must be determined individually
on their own facts and circumstances. See In re The Shoe
Ser. No. 75/682656
5
Works Inc., 6 USPQ2d 1890 (TTAB 1988). However, the facts
and circumstances in the Shoe Works case, supra, included a
specific restriction to that applicant’s trade channels in
the identification of goods (“sold solely through
applicant’s retail shoe store outlets”); a consent
agreement between that applicant and cited registrant; and
an affidavit from one of that applicant’s officers
reiterating the absence of knowledge of any instances of
actual confusion by applicant and registrant. These facts
and circumstances are not present in the application now
before this Board.
Based on the record before us, we readily conclude
that applicant’s goods, “athletic footwear,” are
commercially related to the cited registrant’s goods,
“belts.” See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974
F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992) (Court affirmed
Board holding of likelihood of confusion between KangaROOS
and a kangaroo design for clothing, namely, athletic shoes,
sweatsuits and athletic shirts and KANGOL and a kangaroo
design for golf shirts having collars); General Shoe
Corporation v. Hollywood-Maxwell Co., 277 F.2d 169, 125
USPQ 442 (CCPA 1960) (Court affirmed Board holding of
likelihood of confusion for the same mark INGENUE used on
shoes and hosiery, and brassieres); In re Melville Corp.,
Ser. No. 75/682656
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18 USPQ2d 1386 (TTAB 1991) (ESSENTIALS in stylized form for
women’s shoes against ESSENTIALS for women’s clothing,
namely, pants, blouses, shorts, and jackets); In re Apparel
Ventures, Inc., 229 USPQ 225 (TTAB 1986) (SPARKS BY
SASSAFRAS in stylized form for women’s separates, namely
blouses, skirts and sweaters against SPARKS in stylized
form for shoes, boots and slippers); In re Pix of America,
Inc., 225 USPQ 691 (TTAB 1985)(NEWPORTS for women’s shoes
against NEWPORT for outer shirts); In re Alfred Dunhill
Limited, 224 USPQ 501 (TTAB 1984)(DUNHILL in stylized
lettering for various items of men’s clothing including
belts against DUNHILL for shoes); and In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984) (BOOMERANG for athletic
shoes against BOOMERANG and design for men’s shirts).
Regarding the respective trade channels and
purchasers, applicant’s argument that its goods are sold to
“athletic or sports type stores, such as surf shops”
(brief, p. 9); and its speculation that registrant’s goods
are sold in different trade channels is irrelevant because
the goods are identified with no restrictions as to trade
channels or purchasers in either the application or the
registration. The Board must determine the issue of
likelihood of confusion on the basis of the goods as
identified in the application and the registration. See
Ser. No. 75/682656
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Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). Thus, the Board must consider that the parties’
respective goods could be offered and sold to the same
class of purchasers through all normal channels of trade.
See Octocom Systems Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and In
re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Turning next to a consideration of the respective
marks, the cited registrant’s mark consists of the word
CIRCA in stylized lettering, while applicant’s mark is
CIRCAFOOTWEAR in typed form. It is generally accepted that
when a composite mark incorporates the arbitrary mark of
another for closely related goods or services, the addition
of suggestive or descriptive words or other matter is
insufficient to avoid a likelihood of confusion as to
source. See The Wella Corp. v. California Concept Corp.,
558 F.2d 1019, 194 USPQ 419 (CCPA 1977).
Moreover, it is the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and be
remembered by the purchaser. See Presto Products Inc. v.
Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).
Under actual market conditions, consumers generally do not
have the luxury of making side-by-side comparisons. The
Ser. No. 75/682656
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proper test in determining likelihood of confusion is not a
side-by-side comparison of the marks, but rather must be
based on the similarity of the general overall commercial
impressions engendered by the involved marks. See Puma-
Sportschuhfabriken Rudolf Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980). In the current case
before us, applicant’s addition of the generic term
“footwear” does not serve to distinguish applicant’s mark
from that of the registrant.
Applicant’s argument that the marks are different due
to the “highly stylized lettering” (brief, p. 5) of the
registrant’s mark is not persuasive. Because applicant
seeks registration of its mark shown in plain typed form,
applicant is not limited to the mark depicted in any
special form and applicant could alter the presentation of
the lettering of its mark CIRCAFOOTWEAR at any time. Thus,
it is irrelevant that the registrant’s mark appears in a
particular stylized lettering. See Cunningham v. Laser
Golf Corp., 222 F.3d 1307, 55 USPQ2d 1842 (Fed. Cir. 2000);
and Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d
1376, 170 USPQ 35 (CCPA 1971).
In terms of connotation, the Examining Attorney
submitted The American Heritage Dictionary (Third Edition
1992) definition of “circa” as “in approximately; about.”
Ser. No. 75/682656
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There is no evidence that the word “CIRCA” is anything
other than arbitrary with respect to the involved goods.
Thus, the word “CIRCA” in both applicant’s and registrant’s
marks would connote the same idea. Applicant argued that
“CIRCA” with regard to registrant’s mark connotes the idea
of “in approximately” relating to the variable length of
belts, and the idea of “about” as belts go about a person’s
waist; while applicant’s mark would be perceived by
consumers as meaning “in approximately the time of
footwear.” While these interpretations may be remotely
possible, there is no evidence regarding purchasers’ and/or
potential purchasers’ understanding of either applicant’s
or registrant’s marks. We do not agree that purchasers of
these general consumer goods would go through a complicated
thought process first to define the term “CIRCA” and then
apply that definition in the two differing manners
suggested by applicant. Further, we do not agree that the
term “footwear,” as used in applicant’s mark, and
considered in the context of applicant’s goods, would add
anything unique or different to consumers’ perception of
“CIRCA.”
To the extent that purchasers notice the differences
in the marks, they may believe that applicant’s mark is a
revised version of registrant’s mark, now used on athletic
Ser. No. 75/682656
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footwear. Thus, we find that the marks are substantially
similar in sound, appearance, connotation and overall
commercial impression.
Finally, applicant’s argument regarding “third [-]
party use and registration of similar marks on similar
goods” (brief, p. 9) is unsupported. There is no evidence
of use of any other mark including the word “CIRCA” on any
type of wearing apparel.
Applicant did introduce one third-party registration
(Registration No. 1,229,991, issued March 8, 1983, Section
8 affidavit accepted, Section 15 affidavit acknowledged)
for the mark CIRCA NOW for “female apparel, namely,
sweaters, T-shirts, jackets, and shirts,” arguing that for
the Examining Attorney to maintain this refusal when there
exists another registration for a mark which includes the
word CIRCA for wearing apparel is inconsistent on the part
of the USPTO.
The USPTO strives for consistency of examination, but
as often noted by the Board, each case must decided on its
own merits. We are not privy to the record of this single
third-party registration file, and moreover, the
determination of registrability of that particular mark by
a Trademark Examining Attorney cannot control the merits in
Ser. No. 75/682656
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the case now before us. See In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Suffice it to say that the several cases cited by
applicant during the ex-parte prosecution and appeal of
this case (including the case of In re British Bulldog,
Ltd., 224 USPQ 854 (TTAB 1984)) are all distinguishable
from the facts of this case and do not require a different
result herein.
Although we have no doubt in this case, any doubt on
the question of likelihood of confusion must be resolved
against the newcomer as the newcomer has the opportunity of
avoiding confusion, and is obligated to do so. See TBC
Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed.
Cir. 1997); and In re Hyper Shoppes (Ohio) Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Based on the similarities of the marks; the close
relationship of the goods; and the similarity of the trade
channels, we find that there is a likelihood that the
purchasing public would be confused when applicant uses
CIRCAFOOTWEAR as a mark for athletic shoes.
Decision: The refusal to register under Section 2(d)
is affirmed.