Coast to Coast Apparel Group

Trademark Trial and Appeal Board

Sep 30, 2015

No. 86130687 (T.T.A.B. Sep. 30, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Coast to Coast Apparel Group
_____

Serial No. 86130687
_____

Matthew H. Swyers of The Trademark Company PLLC,
for Coast to Coast Apparel Group.
Jenny Park, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
_____

Before Taylor, Ritchie and Greenbaum,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Coast to Coast Apparel Group (“Applicant”) seeks registration on the Principal
Register of the mark NORTHWOODS LIFE STYLE SOCKS (in standard
characters) for “socks” in International Class 25.1 Applicant disclaimed the word
“SOCKS.”
The Trademark Examining Attorney has finally refused registration of
Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the

1 Application Serial No. 86130687 was filed on November 27, 2013, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as June 2009.
Serial No. 86130687

- 2 -
ground that Applicant’s mark, when used on or in connection with the identified
goods, is likely to cause confusion with the mark in Registration No. 3020561,
NORTHWOODS (in standard characters), for “apparel, namely, shirts, pants,
shorts, and pajamas; outerwear, namely, jackets, parkas, ski bibs, vests, and
anoraks; footwear, namely, boots; ski boots; gaiters” in International Class 25.2
Applicant requested reconsideration of the final refusal which was denied on
February 10, 2015. Applicant subsequently appealed to this Board, and both
Applicant and the Examining Attorney filed briefs. For the reasons explained below,
we affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
The Examining Attorney has objected to evidence consisting of a Wikipedia entry
for L.L. Bean submitted for the first time (as pages 3-8 of Exhibit 2) with
Applicant’s brief. Inasmuch as “[t]he record in the application should be complete
prior to the filing of an appeal,” we find the submission untimely. Trademark Rule
2.142(d), 37 C.F.R. § 2.142(d). See also In re IP Carrier Consulting Group, 84
USPQ2d 1028, 1033-34 (TTAB 2007) (“[T]he Board will consider evidence taken
from Wikipedia so long as the non-offering party has an opportunity to rebut that
evidence by submitting other evidence that may call into question the accuracy of
the particular Wikipedia information.).” In view of the foregoing, the Examining

2 Registration No. 3020561 issued November 29, 2005; renewed.
Serial No. 86130687

- 3 -
Attorney’s objection is sustained and this new evidence, and related arguments,
have not been considered in this decision.
II. 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. See Federated Foods, Inc. v. Fort Howard 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 marks
We first consider the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side
comparison of the marks, but instead ‘whether the marks are sufficiently similar in
terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
Serial No. 86130687

- 4 -
(quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d, 1901,
1905 (TTAB 2007)). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. In re
Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Our analysis cannot be predicated on dissection of the involved marks. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014). Rather, we are obliged to consider the marks in their
entireties. Id. See also, Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). Nonetheless, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. Stone Lion, 110 USPQ2d at 1161. For instance, as our principle
reviewing court has observed, “[t]hat a particular feature is descriptive or generic
with respect to the involved goods or services is one commonly accepted rationale for
giving less weight to a portion of the mark.” See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The dominant and distinguishing portion of the Applicant’s mark is the word
NORTHWOODS, which is the entirety of the cited mark. It is dominant because it
is an apparently arbitrary term for socks, and is the first term in the mark. See
Serial No. 86130687

- 5 -
Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“it is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered”). See also Palm Bay Imports Veuve Clicquot
73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and the first word to
appear on the label). As regards the remaining portion of Applicant’s mark, the
word “socks” is generic for Applicant’s goods and thus has no source-indicating
significance, and the term “LIFE STYLE” is somewhat suggestive in that evokes a
mode of living. As such, these terms are entitled to less weight in our determination
of the source-indicating significance of the mark.
Regarding connotation and commercial impression, Registrant’s cited mark
NORTHWOODS is identical to the dominant portion of Applicant’s mark. To the
extent NORTHWOODS is suggestive of the rugged outdoors, it is equally suggestive
of the goods identified in Applicant’s application and the cited registration. While
not present in the cited mark, neither the somewhat suggestive term “LIFE
STYLE,” nor the generic term SOCKS, significantly distinguishes Applicant’s and
Registrant’s marks. Thus, we are simply unpersuaded by Applicant’s unsupported
assertion that the connotations and commercial impressions differ.
While differences admittedly exist between the respective marks when viewed
on the basis of a side-by side comparison, we find that in their entireties, the marks
are not only substantially similar in appearance due to the shared term
NORTHWOODS but, in light thereof, they are substantially similar in connotation
Serial No. 86130687

- 6 -
and convey a substantially similar commercial impression. The factor of the
similarity of the marks thus favors a finding of likelihood of confusion.
b. The Relatedness of the goods, trade channels and classes of purchasers
We now consider the second du Pont factor, the relatedness of the goods. It is
well-established that the goods need not be similar or competitive, or even offered
through the same channels of trade, to support a holding of likelihood of confusion.
It is sufficient that the respective goods are related in some manner, and/or that the
conditions and activities surrounding the marketing thereof are such that they
would or could be encountered by the same persons under circumstances that could,
because of the similarity of the marks, give rise to the mistaken belief that they
originate from the same source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); In re International
Telephone & Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). The issue, of
course, is not whether purchasers would confuse the goods and services, but rather
whether there is a likelihood of confusion as to the source thereof. In re Rexel Inc.,
223 USPQ 830 (TTAB 1984).
Here, Applicant’s goods are identified as “socks” and Registrant’s goods are
identified as “apparel, namely, shirts, pants, shorts, and pajamas; outerwear,
namely, jackets, parkas, ski bibs, vests, and anoraks; footwear, namely, boots; ski
boots; [and] gaiters.”
In support of her position that Applicant’s goods are related to those recited in
the cited registration, the Examining Attorney made of record web pages from the
Serial No. 86130687

- 7 -
websites of outdoor clothing manufacturers demonstrating that entities who
manufacture and sell socks also manufacture and sale other clothing items,
including clothing items of the type identified in the cited registration, under a
single mark. These manufactures include: The North Face (www.thenorthface.com)
[socks, shirts, pants, shorts, jackets. parkas, vests and boots], Columbia
(www.columbia.com) [socks, shirts, pants, jackets, vests, and boots], and Patagonia
(www.patagonia.com), [socks, pants, shirts, shorts, jackets and boots].3 Notably, the
record reflects that Registrant manufactures and sells both socks and clothing
items, including jackets and boots. In addition, as identified, Applicant’s socks and
Registrant’s boots are complementary inasmuch as socks and boots are generally
worn together.
We accordingly are convinced that Applicant’s socks and Registrant’s outdoor
clothing and footwear items are related for purposes of our likelihood of confusion
analysis.
Applicant argues that, despite belonging to the same general category of goods,
those particularly offered by Applicant and Registrant do not actually overlap.4 We
reiterate that the goods need only be related in such a manner that they could be
encountered by the same consumer under situations that would lead to the
mistaken belief that they originate from the same source.

3 Applicant also included web pages from the website of Spyder (www.spyder.com).
However, this evidence fails to show goods of the type identified in both the application and
cited registration.
4 By this we presume that Applicant is arguing that there is no identity of goods covered by
the respective marks.
Serial No. 86130687

- 8 -
Applicant also argues that its goods are sold through retail stores and through
its website, while Registrant’s goods are sold in connection with the L.L. Bean
family of products available through Registrant’s website, catalogue, and L.L. Bean
store locations. However, in the absence of any limitations in the identifications as
to channels of trade in the application and the cited registration, we must presume
that both Applicant’s and Registrant’s identified goods will be purchased in the
usual channels of trade therefor, including general retail establishments. Likewise,
in the absence of any limitations as to classes of purchasers in the respective
identifications, we must presume that the respective identified goods will be
purchased by the usual classes of purchasers which, in this case, include ordinary
consumers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Thus, at a minimum,
the channels of trade and classes of purchasers overlap.
In view thereof, the du Pont factors of the relatedness of the goods, channels of
trade and classes of purchasers favor a finding of likelihood of confusion.
c. Conditions of Purchase
Last, Applicant argues that both the buyers of Applicant’s and Registrant’s
goods are likely to be sophisticated, and to make careful and deliberate purchasing
decisions. Although the record is devoid of pricing information for Applicant’s socks,
socks are typically an inexpensive ordinary consumer item which will be purchased
by ordinary consumers exercising no more than ordinary care. On the other hand,
there is evidence in the record that apparel and footwear items of the type identified
in the cited registration can include expensive items. Nonetheless, even if the
Serial No. 86130687

- 9 -
purchasers of Registrant’s apparel and footwear items exercise some degree of care
in their purchasing decisions, even careful purchasers can be confused as to source
under circumstances where, as here, substantially similar marks are used on
related and complementary goods. See In re Research Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human
memories even of discriminating purchasers … are not infallible.")).
III. Conclusion
In view of the foregoing, we conclude that prospective purchasers familiar with
the registered mark NORTHWOODS for “apparel, namely, shirts, pants, shorts,
and pajamas; outerwear, namely, jackets, parkas, ski bibs, vests, and anoraks;
footwear, namely, boots; ski boots; and gaiters” would be likely to believe, upon
encountering Applicant’s substantially similar mark NORTHWOODS LIFE STYLE
SOCKS for “socks,” that such goods emanate from, or are sponsored by or affiliated
with the same source.
Decision: The refusal to register Applicant’s mark NORTHWOODS LIFE
STYLE SOCKS is affirmed.