Deere & Co.v.JD American Workwear

Trademark Trial and Appeal Board

Dec 16, 1998

No. 91102180 (T.T.A.B. Dec. 16, 1998)

Paper No.14
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 16, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Deere & Company
v.
JD American Workwear, Inc.
_____
Opposition No. 102,180
to application Serial No. 74/717,526
filed on Aug. 18, 1995
_____
Michael W. Mihm for Deere & Company.
Keith F. Noe of Salter & Michaelson for JD American
Workwear, Inc.
______
Before Seeherman, Hanak and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
JD American Workwear, Inc. has filed an application to
register the mark JD AMERICAN WORKWEAR for “work clothing,
namely, pants, shirts, jackets, coveralls and uniforms”.1

1 Ser. No. 74/717,526, filed Aug. 18, 1995, on the basis of a
bona fide intent to use. A disclaimer has been entered of the
words AMERICAN WORKWEAR.
Opposition No. 102180
2
Deere & Company has filed an opposition to registration
of the mark under Section 2(d) of the Trademark Act, on the
ground of likelihood of confusion. Opposer alleges prior
and continuous use of the mark JD on clothing for more than
ten years, and the likelihood of confusion with applicant’s
intended use of its JD AMERICAN WORKWEAR mark on goods very
similar and directly competitive with opposer’s goods.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.
The record consists of the file of the involved
application; the testimony affidavits of Deborah Taylor and
Rheta Mueller and accompanying exhibits for opposer;
opposer’s notice of reliance introducing certain answers of
applicant to opposer’s interrogatories; the testimony
affidavit of David DeBaene and accompanying exhibits for
applicant; and applicant’s notice of reliance introducing
certain answers of opposer to applicant’s interrogatories.2
Both parties filed briefs on the case, but no oral hearing
was requested.
Opposer has established through the affidavit of
Deborah Taylor, a product manager with the Trademark
Administration Group of opposer, that opposer has sold

2 Both parties agreed to the submission of testimony in affidavit
form. See Trademark Rule 2.123(b).
Opposition No. 102180
3
clothes bearing a stylized JD mark3 continuously since at
least November 22, 1976, with only the particular clothing
articles on which the mark was used being changed, e.g., on
winterwear in the period of 1979-1983, on casual clothes
such as sports shirts in 1978-79, and on sweatshirts and
caps at the present time. Initially, opposer purchased the
clothing from suppliers. Opposer in turn sold the clothes
wholesale to its dealers who then sold the items to the
general public. Currently, the dealers purchase the clothes
directly by placing catalog orders with authorized licensees
of opposer. One licensee also sells items directly to
opposer’s employees, retirees, and the public by catalog.
The licensees, rather than opposer, advertise to the public
through brochures available at the dealerships. The
Florsheim Shoe Co. is a licensee which sells footwear such
as work boots and socks in its retail shoe stores bearing
John Deere marks, although no evidence has been submitted of
use of the JD mark on these items.
Opposer has made of record copies of its registrations
for the mark JD in either stylized or typed form for
numerous types of farm machinery, snowmobiles, lawn and
gardening machinery, and parts therefor, as well as for a
magazine. Opposer has also testified to its use of the

3 The stylized form of the letters consistently used by opposer
on clothing is as follows:
Opposition No. 102180
4
letters JD in connection with other terms as marks for
products or services including, inter alia, a computerized
information system available at its dealers (JDVision), a
computer software product (JDMap), and its parts delivery
services (JD Parts Express).
Applicant, in the testimony affidavit of David DeBaene,
President and CEO of applicant, has established that the
letters JD in its mark are an abbreviation of the name of
its predecessor, Jacque DuBois, Inc.; that use of its mark
was begun in August 19954 and has been continuous since that
time; that applicant’s products are primarily sold through
catalogs and direct mail orders; and that during the period
between August 1995 and February 1996 total sales were
approximately $100,000, but between February 1996 and
February 1997 increased to $604,000. Applicant has
introduced labels for its goods showing use of the mark JD
AMERICAN WORKWEAR in a typed format together with a design
featuring the letters JD.
Looking first to priority of use with respect to
clothing, we find that opposer has established use of its JD
mark on clothing since at least November 22, 1976, whereas
the earliest use that applicant has shown of its mark is

4 An invoice dated Aug. 29, 1995 has been introduced into the
record.
Opposition No. 102180
5
August 1995. Accordingly, opposer has proven priority of
use.
Thus, we turn to the issue of likelihood of confusion
and the du Pont factors which are most relevant to the
circumstances at hand. See In re du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
With respect to the marks themselves, opposer argues
that opposer’s mark JD and applicant’s mark JD AMERICAN
WORKWEAR are “strikingly similar.” Opposer contends that
since the words AMERICAN WORKWEAR have been disclaimed as
descriptive, the dominant portion of applicant’s mark is
necessarily JD. Although acknowledging that the marks must
be considered in their entireties, opposer insists that the
significant portion of applicant’s mark, and the portion to
which purchasers would look, is virtually identical to
opposer’s JD mark.
Applicant strongly contends that in making any
comparison we must consider the marks in their entireties,
and not discount the descriptive portion of applicant’s
mark. As such, applicant maintains that JD AMERICAN
WORKWEAR and JD are completely different in sound, sight and
overall commercial impression. Applicant further points to
third-party registrations which it has made of record as
Opposition No. 102180
6
evidence that the letter combination JD in itself is weak as
applied to clothing.5
It is true that the filing of a disclaimer does not
remove the disclaimed matter from consideration in
determining the likelihood of confusion. The marks must be
considered in the way they will be viewed by the relevant
public. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687 (Fed. Cir. 1993). Furthermore, it is well established
that marks must be compared in their entireties and that the
likelihood of confusion cannot be predicated on only part of
a mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). At the same time, however, there
is nothing improper in giving more or less weight to a
particular portion of a mark, particularly if descriptive
matter is involved. See In re National Data Corp., supra;

5 Status and title copies of the following registrations were
introduced by the affidavit testimony of David DeBeane:
Reg. No. 1,566,074 for the mark J.D.DOLE(stylized)
for T-shirts;
Reg. No. 1,567,298 for the mark JD(stylized) for
footwear;
Reg. No. 1,602,411 for the mark JD SUN VALLEY and design
(SUN VALLEY disclaimed)for clothing, namely, one piece ski
suits, ski bibs, ski pants, parkas, head bands, sweaters,
turtle neck sweaters, T-shirts and hats;
Reg. No. 1,825,210 for the mark J.D. DROVER and design
for sportswear clothing for men and women, namely,
men’s shirts, women’s blouses, T-shirts, jackets, coats,
pants, shorts, skirts, belts, gloves, footwear including
shoes and boots and headwear including hats and headbands;
and Reg. No. 1,854,721 for the mark JD JULIE DESIGNS
(stylized)(DESIGNS disclaimed) for clothing, namely, lycra
shirts for surfing, lycra competition vests for surfing,
skiing and snowboarding.
Opposition No. 102180
7
Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993).
In the present case, opposer has consistently used the
letters JD in a stylized form such that the back of the “J”
and the front of the “D” are joined together. Its
proprietary rights are thus so defined. Applicant’s mark,
on the other hand, includes not only the letters JD and the
words AMERICAN WORKWEAR, but also is unlimited as to style
of use, being presented for registration in a typed drawing.
Nonetheless, we find that the marks, when considered in
their entireties, would create similar commercial
impressions. While purchasers would also see the words
AMERICAN WORKWEAR in applicant’s mark, we cannot overlook
the fact that the mark is being used in connection with
“work clothing”. Even though these purchasers would be
unaware that a disclaimer has been made of these words, they
would not be oblivious to the fact that the words are
descriptive of the goods on which they are being used,
namely, workwear made in America. As such, the source-
indicating significance of the words AMERICAN WORKWEAR would
be minimal in comparison to the letters JD. See Hilson
Research Inc. v. Society for Human Resource Management,
supra.

Reg. No. 1,005,365 was also cited, but this registration has
expired and thus will not be considered.
Opposition No. 102180
8
Furthermore, the labels submitted by applicant show
actual use of the mark JD AMERICAN WORKWEAR in conjunction
with a stylized “JD”, although the latter is not part of the
mark sought to be registered. While this design feature,
or perceivably second mark, may be changed or deleted at the
whim of applicant, still it can be taken into consideration
as evidence that a confusingly similar commercial impression
may be created. See Northwestern Golf Co. v. Acushnet Co.,
226 USPQ 240 (TTAB 1985)[evidence of context in which mark
is used on labels, etc. is probative of significance mark is
likely to project to purchasers]. As such, we consider this
to be evidence of applicant’s emphasis on the “JD” portion
of the mark sought to be registered. Although opposer’s
letters JD are in a stylized form which is not the same as
either the JD used by applicant in its mark or in its JD
design, in each stylization the letters “J” and “D” are
discernible. Thus, the overall commercial impression to the
average purchaser for each mark would most likely be the
same, that is, the letters JD.
Insofar as third-party use of the letters JD in
connection with clothing is concerned, we find that little
weight can be accorded to the third-party registrations
introduced by applicant. As often stated, third-party
registrations are not evidence of use of the marks or that
consumers are familiar with such marks in the marketplace
Opposition No. 102180
9
and thus are of little value in determining the likelihood
of confusion. See Hilson Research Inc. v. Society for Human
Resource Management, supra. Furthermore, in all but one
registration, the letters J.D. are only a portion of the
mark, with non-identical words being added thereto. The one
registration for the letters JD alone is in a different
specific stylized form, and the goods are restricted to
footwear. This is clearly insufficient evidence to hold
that the letters JD are weak when used in connection with
clothing in general.
Turning next to the similarity or dissimilarity of the
goods, we can find little distinction to be drawn between
the work clothes of applicant and the casual clothing items
upon which opposer uses its JD mark. Even though not
identified as work clothing, the sweatshirts and caps of
opposer might well be worn as work clothing, in the same
manner as applicant’s shirts, jackets, and the like. Thus,
the goods, although not identical, are closely related and
might well originate from the same source.
Applicant further contends that the channels of trade
differ for the respective goods and that the trades persons
who buy its work clothing are a different type of purchaser
than the types of purchasers of opposer’s clothing at John
Deere dealers.
Opposition No. 102180
10
We first note that there are no limitations in the
identification of applicant’s goods to any specific channels
of trade or means of sale. Thus, the goods are presumed to
travel through all the normal channels of trade for goods of
this nature. See Matsushita Electric Industrial Co., Ltd.
v. Sanders Associates, Inc., 177 USPQ 720 (TTAB 1973).
Although applicant’s work clothes are presently sold through
catalogs and direct mail orders, including a catalog of J.C.
Penney,6 these channels of trade are open to expansion or
change. On the other hand, opposer’s clothing is primarily
sold at John Deere dealerships or by catalog to former
employees of John Deere.
Despite this present disparity in markets, we are
persuaded that, contrary to applicant’s arguments, the type
of potential purchasers of the goods of the two parties
might well be the same. We agree with opposer that many
persons who purchase work clothes would also be likely to
frequent John Deere dealerships and to purchase clothing
being marketed there. As pointed out by opposer, persons
involved in the trades such as construction work are not
only purchasers of work clothing but also would be likely to
be familiar with, and purchasers of, John Deere equipment.
Although these same consumers may come in contact with

6 While this specific catalog sale has only been described in
applicant’s brief and not verified for the record, we find it
appropriate to use the information for exemplary purposes.
Opposition No. 102180
11
opposer’s casual clothing at its dealerships and with
applicant’s work clothing in a catalog, they are likely to
be confused upon seeing JD marks on both.
The other factors raised by applicant also favor
opposer. Although opposer acknowledges that its JD mark is
not as famous or well-known as its other marks, this does
not detract from its established use of the JD mark over a
period of years. Furthermore, although no instances of
actual confusion have been noted since applicant began use
of its mark two years ago, this minimal period of concurrent
use without actual confusion can be accorded little weight
in determining the likelihood of confusion.
Accordingly, we find the similarities in the marks and
the goods, and particularly the potential for the same
consumers to view these marks, sufficient to resolve the
determination of likelihood of confusion in opposer’s favor.
While we are not totally without doubt, this doubt must also
be weighed in opposer’s favor, as the prior user against the
newcomer. See Giant Food Inc. v. Nation’s Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983).
Decision: The opposition is sustained and registration
is refused to applicant.
E. J. Seeherman

Opposition No. 102180
12
E. W. Hanak
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board