Coralie Downing and Keri Caffrey

Trademark Trial and Appeal Board

Nov 21, 2007

No. 78603930 (T.T.A.B. Nov. 21, 2007)

Mailed:
November 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Coralie Downing and Keri Caffrey
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Serial No. 78603930
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Lori T. Milvain of Latham, Shuker, Barker, Eden & Beaudine,
LLP for joint applicants Coralie Downing and Keri Caffrey.

Inga M. Ervin, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Holtzman, Zervas, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

On April 4, 2005, Coralie Downing and Keri Caffrey
(joint applicants) applied to
register the mark appearing to
the right on the Principal
Register for the following
goods:

Jewelry, namely, pendants, necklaces, bracelets, earrings,
and pins in International Class 14;

Pens, pencils, calendars, and posters, all related to
women's cycling in International Class 16; and

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78603930
2
Women cyclists' clothing, namely, jerseys, shorts, t-
shirts, jackets, socks, caps, bandanas, scarves,
sweatshirts, sweaters, arm warmers, and leg warmers in
International Class 25.

The application contains a statement indicating the
stylized design portion of the mark depicts a “woman
cycling.” The application is based on an allegation that
the applicants have a bona fide intent to use the mark in
commerce.
The examining attorney refused to register the mark
under Section 2(d) of the Trademark Act because of two
prior registrations. 15 U.S.C. § 1052(d). The first cited
registration is for the mark BOBBY’S (in standard character
form) for “retail store services namely a department store”
in International Class 42.1 The second cited registration
was for the mark BOBBI (in stylized characters) for “fine
jewelry” in International Class 14.2
After the examining attorney made the refusal final,
this appeal followed.
In their appeal brief, applicants correctly note that
the registration for the mark BOBBI, Registration No.
2306069, was cancelled (see footnote 2) subsequent to

1 Registration No. 1555313, issued September 5, 1989. Section 8
affidavit accepted and Section 15 acknowledged.
2 Registration No. 2306069 issued on January 1, 2000, but was
cancelled on October 7, 2006 for failure to file a Section 8
affidavit.

Serial No. 78603930
3
issuance of the examining attorney’s final Office Action.
Accordingly, this appeal and our decision herein are
limited to the Office’s refusal based on Registration No.
1555313 for the mark BOBBY’S.
Before we begin our likelihood of confusion analysis,
we note that, as an evidentiary matter, applicants rely on
a list of third-party registrations (for marks containing
the term BOBBY or BOBBIE) in their appeal brief. Although
copies of the registrations were not attached to their
brief or otherwise previously submitted, the examining
attorney did not object to the list and, indeed, discussed
the list of registrations. Accordingly, the list of
registrations may be treated as stipulated into the record.
See TBMP §§ 1207.03 and 1208.02 (2d ed. rev. 2004), and
authorities cited therein [regarding evidence considered
due to actions of non-offering party and treatment of
third-party registrations]. While the Board gives
consideration to this list of third-party registrations, we
find it to have little, if any, probative value for
purposes of our likelihood of confusion analysis. Miss
Universe Inc. v. Drost, 189 USPQ 212 (TTAB 1976) [third-
party registrations are of little material significance in
determining likelihood of confusion since their existence
Serial No. 78603930
4
is not evidence of what happens in the marketplace or of
the fact that consumers are familiar with them].
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant
to the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973).
However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976), in any likelihood of confusion analysis, two key
considerations are the similarity or dissimilarity in the
goods/services at issue and the similarity or dissimilarity
of the respective marks in their entireties.
We first consider the marks at issue. In doing so, we
examine the similarities and dissimilarities of the marks
in their appearance, sound, meaning, and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
The examining attorney argues that, in spite of the
spelling differences, the literal portions of applicants’
mark and the registered mark are phonetic equivalents. The
examining attorney argues that the design portion of
applicants’ mark does not distinguish their mark from the
Serial No. 78603930
5
registered mark because the word portions of the marks are
more likely to “be impressed upon a purchaser’s memory”
and, as such, should be accorded greater weight in
determining likelihood of confusion, citing In re Dakin’s
Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco
Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); and TMEP
§1207.01(c)(ii).
The applicants contend that their mark and the
registered mark have several distinguishing
characteristics. First, applicants note that the
registered mark is the possessive form of the name, Bobby,
whereas the literal portion of applicants’ mark is stylized
and mixes upper and lower case lettering to form a plural
of the name, “BOBbies.” Applicants also argue that the
design portion of their mark creates significant
differences in the respective marks’ appearance, meaning
and commercial impression. Specifically, applicants argue
the design portion of their mark is “suggestive of
something having to do with cycling, and its highly
stylized depiction creates a distinct commercial impression
that is very different from the cited registration which
contains only BOBBY’S in block letters.”

Serial No. 78603930
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Although we are in agreement with the examining
attorney that the literal portions of both marks are
phonetically the same and aside from the obvious fact they
begin with the letters “BOBB…,” we find that the marks have
significant differences so that when they are considered as
a whole, they are indeed dissimilar in appearance,
commercial impression and meaning. Perhaps the most
important difference is the presence and prominence of the
design portion in applicants’ mark. The design is quite
large relative to the literal portion. Indeed, the term
“BOBbies” is partially incorporated and placed under the
wheels of the bicycle design. Applicants’ argument that
the design portion of their mark creates a distinct overall
commercial impression is also persuasive. The fanciful,
stylized depiction of a person with long hair flowing
backwards while leaning forward on a bicycle injects a
separate cycling or sportive theme into the mark that is
not present in the registered mark. Because of the
importance of the design portion to applicants’ mark, we
find that it visually dominates the mark and adds
significantly to its commercial impression.
Regarding the meanings of the marks, we also find
there is a difference. The registered mark is simply the
possessive of the nickname, Bobby, and in connection with
Serial No. 78603930
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registrant’s department store services creates the
impression that said services are rendered by or in some
way connected with someone with the name “Bobby.” On the
other hand, the literal portion of applicants’ mark,
BOBbies, is the plural of the nickname.
In view of the above, we conclude that the literal
portions of the marks are phonetically equivalent but the
marks, as a whole, are otherwise dissimilar in their
commercial impressions and appearance. There is also a
slight difference in the meaning of the literal portions of
the marks.
We turn now to the similarity or dissimilarity of
registrant’s department store services and applicants’
goods. The evidence of record submitted by the examining
attorney is scant at best. The examining attorney attached
seven excerpted articles from the Nexis database and a
dictionary definition of the term “department store.”3
However, the examining attorney only cited these excerpted
articles in support of her refusal of applicants’ mark
based on the second (now cancelled) registration. Indeed,

3 The examining attorney referenced The Encarta World English
Dictionary, North American Edition (http://encarta.msn.com/) for
a definition of a department store.

Serial No. 78603930
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the examining attorney makes no mention of these excerpted
articles in her brief.
The examining attorney argues that registrant’s
services and applicants’ goods “need only be related in
some manner, or the conditions surrounding their marketing
are such that they would be encountered by the same
purchasers under circumstances that would give rise to the
mistaken belief that the goods and/or services come from a
common source,” citing a string of cases for this
proposition. She then contends that a department store is,
by definition, “a large store that sells a wide range of
goods in separate departments” and “[a]s such, a department
store would be likely to sell everything from the
applicant’s jewelry, to pens and pencils, to its cyclists’
clothing. It is highly possible then, that consumers would
mistakenly believe that the goods and services emanate from
a common source.”
Contrary to the examining attorney’s position, there
is no per se rule with respect to this du Pont factor where
we find that one party’s department store services are
related to the other party’s goods simply because the goods
may be sold in a department store. Moreover, accepting the
dictionary definition offered by the examining attorney, we
acknowledge that department stores offer for sale a variety
Serial No. 78603930
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of goods; however, the record is such that we cannot
conclude that registrant’s department store services are
closely related to applicant’s jewelry and women’s cycling-
related goods. Specifically, as to applicants’ women’s
cycling-related goods, including clothing, there is no
evidence that department stores normally carry such goods
or that purchasers could expect to find such goods in a
department store. Evidence is also lacking to establish
that retail department stores normally sell jewelry (or any
other of the applicants’ goods) under their own house marks
or brand names, or that purchasers normally would expect
such goods to be sold under a department store's house mark
or brand name.
Although not mentioned by the examining attorney in
her brief, one of the excerpted articles actually supports
her position that some of applicant’s goods, the jewelry,
may be found in a department store. Specifically, the
article excerpt is as follows:
Check out the collection, which also includes
necklaces, earrings and rings, at Bloomingdale's Fine
Jewelry department on the first floor.

[excerpted from Chicago Sun Times, June 8, 2006]

This article excerpt is probative, but it does not, by
itself or in conjunction with the dictionary definition of
“department store,” rise to the level of evidence needed to
Serial No. 78603930
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demonstrate a similarity between registrant’s services and
applicants’ jewelry. Again, even if the article excerpt
indicates that a department store offers fine jewelry for
sale, it does not establish that the department store
applies its house mark or uses it own brand name for the
jewelry.
In summary, when we balance the relevant du Pont
factors in this case and in view of the record before us,
we hold that confusion is not likely here.
Decision: The examining attorney's refusal to register
under Section 2(d) is reversed.