Eliza Browne

Trademark Trial and Appeal Board

Apr 22, 2016

No. 86017943 (T.T.A.B. Apr. 22, 2016)

Mailed: April 22, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Eliza Browne
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Serial No. 86017943
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Matthew H. Swyers of The Trademark Company PLLC,
for Eliza Browne.

Steven M. Perez, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Bergsman, Ritchie, and Kuczma,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Eliza Browne (“Applicant”) filed an application to register the mark CHI, and
design, as shown below, on the Principal Register, for “hats; t-shirts,” in International
Class 25:1

1 Application Serial No. 86017943, filed on July 23, 2013 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use in commerce.
This Opinion Is Not A
Precedent Of The TTAB
Serial No. 86017943
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The Trademark Examining Attorney refused registration of the mark under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the previously-registered mark CHI, registered on the
Principal Register in standard character format, for “pants; shorts,” in International
Class 25,2 that when used on or in connection with Applicant’s mark, it is likely to
cause confusion or mistake or to deceive.
Upon final refusal of registration, Applicant filed a timely appeal. Both Applicant
and the Examining Attorney filed briefs. After careful consideration of the arguments
and evidence of record, we affirm the refusal.
Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
evidence of record bearing on a 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 Company, 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 or services. See Federated

2 Registration No. 2402208, issued November 7, 2000. Renewed.
Serial No. 86017943
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Foods, Inc. v. Fort Howard 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”). We
consider each of the factors as to which Applicant or the Examining Attorney
presented arguments or evidence.

The Marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). The mark in the cited registration is CHI, in standard character format.
Applicant’s mark consists of the same letters CHI, with various urban designs
imprinted on them. In very small font in the upper righthand corner, visible only
when the mark is considerably enlarged, is the phrase “CHI REPRESENT”:

Serial No. 86017943
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Applicant argues that the shared term “CHI” is a “weak, geographically descriptive
term” referring to the city of Chicago. 4 TTABVUE 11. To support this argument,
Applicant references in her brief a website, City-Data.com, and asks us to take
judicial notice thereof. As the Examining Attorney notes, however, the Board does
not take judicial notice of web sites from links provided. See In re HSB Solomon Assoc.
LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (“Moreover, a reference to a website’s
internet address is not sufficient to make the content of that website or any pages
from that website of record.” (cites omitted)).
Applicant also referred in her May 13, 2014 Response to Office Action to seven
third-party registrations that include the term “CHI” for goods in International Class
25. These include CHI YU, and design (Registration No. 3,633,532); CHI-RAQ
(Registration No. 4,438,406); CHI-CITY (Registration No. 4,208,036); REP CHI
(Registration No. 4,118,551); CHI BY FALCHI (Registration No. 3,665,433); DIVINE
CHI and design (Registration No. 3,726,197); DELTA CHI (Registration No.
1,589,899). Of these, two list owners located in Chicago, CHI-CITY, and REP CHI.
Another, DIVINE CHI, is an apparent reference to the Eastern religious term, “Chi.”
In this regard, there is a translation statement in the cited registration: The word
“Chi” translates into English as “energy.” Yet another interpretation, set forth in
Registration No. 1,589,899 for DELTA CHI, states: The mark consists of the Greek
letters “Delta” and “Chi.” We find therefore that there are several possible
connotations of the term “Chi,” not limited to being a geographical descriptor for the
city of Chicago.
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Since the mark in the cited registration is registered in standard character form,
it may be displayed in any number of styles. See Citigroup v. Capital City Bank
Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (“If the registrant
complies with Section 2.52 of the Rules of Practice in Trademark Cases and obtains
a standard character mark without claim to ‘any particular font style, size or color,’
the registrant is entitled to depictions of the standard character mark regardless of
style, size, or color, not merely ‘reasonable manners’ of depicting its standard
character mark.”). We further note that the letters “CHI” constitute the dominant
portion of Applicant’s mark, as they form the overwhelming literal portion, and would
be the term that consumers would use to call for, or refer to, the goods. See In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) (citing CBS Inc.
v. Morrow, 708 F.2d 1579, 1581-82, 218 USPQ 198 (Fed. Cir. 1983)).
Applicant submitted a declaration stating that her clothing is “intended
exclusively for those seeking to portray their love for and pride of the city of Chicago
through hats and shirts.” (Delgado decl. at para. 2; May 13, 2014 Response to Office
Action, p.21). She argues that there is “absolutely no overlap” with the Registrant
which “appears to use the ‘chi’ portion of their marks as an alternate spelling of ‘qi’
which means ‘natural energy’, ‘life force’, or ‘energy flow.’” Id. at para 4, p.22. Overall,
we find that, because the term “CHI” in the cited registration has a commercial
impression subject to interpretation as “energy,” the Greek letter “Chi,” or a reference
to the city of Chicago, and because the term is in standard character form, it may
have the same commercial impression as it does in Applicant’s mark. Accordingly,
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the differences in sight and sound are outweighed by similarities in connotation and
commercial impression, and the first du Pont factor weighs in favor of finding a
likelihood of confusion.
The Goods and Channels of Trade
In determining the similarity or dissimilarity of the goods, we note that goods or
services need not be identical or even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that the goods or services are related in
some manner or that some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under circumstances which could
give rise, because of the marks used or intended to be used therewith, to a mistaken
belief that they originate from or are in some way associated with the same producer
or that there is an association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Applicant’s identification of goods is “hats; t-shirts” while the goods identified in
the cited registration are “Pants; shorts.” Applicant states in her brief: “Applicant
must concede the similarity of the goods or services as recited in the Applicant’s
applied-for trademark as well as the registered trademark.” 4 TTABVUE 13. The
Examining Attorney also submitted into the record evidence of numerous, use-based
third-party registrations that include both “pants” or “shorts” as identified in the
cited registration, and “hats” or “t-shirts” as identified by Applicant. Some examples
include WET YOUR WICKS (Registration No. 4681794); GENERAL QUARTERS
(Registration No. 4691721); CITY OF HOOPS (Registration No. 4695878); SMOKIN’
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MOTHER NATURE (Registration No. 4699410); THE PROMISE-LINE (Registration
No. 4699602); PUT ( Registration No. 4716304); DO 4 SELF (Registration No.
4716551); and PADDLERONDACK (Registration No. 4671488). Copies of use-based,
third-party registrations may serve to suggest that the goods are of a type which may
emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785 (TTAB 1993). The Examining Attorney further included evidence of third-party
websites that offer for sale pants, shorts, hats, and t-shirts, including from the Gap
(gap.com); Uniqlo (uniqlo.com); L.L. Bean (llbean.com); and Old Navy
(http://oldnavy.gap.com).
With regard to the channels of trade, Applicant argues that she offers her clothing
“through a consignment store in Chicago” and in the future expects to sell through
“street festivals and fairs in Chicago.” (Delgado decl. at para. 5; May 13, 2014
Response to Office Action, p.22). She also admits to advertising on Facebook. Id. at
Paragraph 8. She further admits that Registrant’s marks “were listed on a Facebook
page” but that “it does not appear to have been updated since 2012.” Id., at pp.22-23.
In the absence of specific limitations in the cited registration, we must presume
that Registrant’s goods will travel in all normal and usual channels of trade and
methods of distribution. Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937,
939 (Fed. Cir. 1983);see also In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992)
(because there are no limitations as to channels of trade or classes of purchasers in
either the application or the cited registration, it is presumed that the services in the
registration and the application move in all channels of trade normal for those
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services, and that the services are available to all classes of purchasers for the listed
services). Since there are no limitations on the channels of trade in Applicant’s
identification of goods either, we must make the same presumption with regard to
Applicant’s goods. In other words, there is nothing that prevents the Applicant’s hats
and t-shirts from being sold in some of the same channels of trade and to the same
classes of consumers as Registrant’s pants and shorts, and vice versa.
Accordingly, these du Pont factors, too, favor finding a likelihood of confusion.
Consumer Sophistication and Degree of Purchaser Care
Applicant urges us to consider the consumer sophistication and degree of
purchaser care likely to be exercised for the clothing at issue in this proceeding,
arguing that her clientele exercise a “very high level of sophistication.” (Delgado decl.
at para. 9; May 13, 2014 Response to Office Action, p.23). There is evidence that
Registrant’s pants retail for $149. See May 13, 2014 Response to Office Action, p. 27.
There is no evidence, though, about the range of price of the clothing at issue in this
proceeding or the care that may be exercised in purchase thereof. We find this factor
to be neutral.
Conclusion
Considering all of the evidence and arguments of record as it pertains to the
relevant du Pont factors, we find a substantial similarity between Applicant’s mark
and the standard character registered mark “CHI,” with related goods travelling
through the same and similar channels of trade to the same classes of purchasers.
Accordingly, we find a likelihood of confusion with this mark.
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Decision: The refusal to register is affirmed.