Fame Jeans, Inc.

Trademark Trial and Appeal Board

May 31, 2002

No. 75889614 (T.T.A.B. May. 31, 2002)

5/31/02 Paper No. 14
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fame Jeans, Inc.
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Serial No. 75/889,614
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Lewis F. Gould, Jr., of Duane, Morris & Heckscher LLP.

Amy E. Hella, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Seeherman, Hohein and Bottorff, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Fame Jeans, Inc. has filed an application to register
the mark "MOTO JEANSWEAR" for "clothing, namely, jeans, jeans
tops and jeans jackets."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground

1 Ser. No. 75/889,614, filed on January 6, 2000, which is based on an
allegation of a bona fide intention to use such mark in commerce. The
term "JEANSWEAR" is disclaimed.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/889,614
2
that applicant's mark, when used in connection with its goods,
so resembles the mark "MOTO WEAR" and design, which is
registered as shown below

for "garments for motorcycle riders; namely, jackets and one-
piece overall riding suits,"2 as to be likely to cause confusion,
mistake or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
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

2 Reg. No. 1,743,261, issued on December 29, 1992, which sets forth a
date of first use anywhere and first use in commerce of May 25, 1991;
affidavit §8 accepted and affidavit §15 acknowledged. The term "WEAR"
is disclaimed. In addition the registration states that the mark
"consists of a stylized capital letter 'M' above a stylized capital
letter 'W'" and "is lined for the colors green, red, and blue.".

Ser. No. 75/889,614
3
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any likelihood of
confusion analysis, two key considerations are the similarity of
the goods and the similarity of the marks.3
Turning first, therefore, to consideration of the
respective goods, it is well established, as pointed out by the
Examining Attorney in her brief, that goods need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
that the goods are related in some manner and/or that the
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed
in connection therewith, to the mistaken belief that they
originate from or are in some way associated with the same
producer or provider. See, e.g., Monsanto Co. v. Enviro-Chem
Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Applicant argues, however, that its goods are not only
"non-competitive," but they are "unrelated to the goods sold by
the cited registrant." In particular, applicant insists that it
"will produce and sell demin [sic] clothing such as jeans, jeans
jackets and jeans tops" under its "MOTO JEANSWEAR" mark and it

3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
Ser. No. 75/889,614
4
"does not produce or sell leather clothing or one-piece overall
suits" under such mark. Thus, according to applicant, "it is
clear that ... jeans and other denim clothing articles ... are
completely different than the leather riding jackets and one-
piece coverall riding suits provided" by registrant under the
cited mark. In consequence thereof, applicant asserts that "it
is clear that the channels of trade and the types of purchasers
would also be different" for the respective goods.
We agree with the Examining Attorney, however, that
the respective goods are closely related products and, as
identified, would even encompass the same articles of clothing,
namely, jeans jackets. As the Examining Attorney correctly
observes in her brief, it is well established that the issue of
likelihood of confusion must be determined on the basis of the
goods as they are set forth in the involved application and the
cited registration. See, e.g., CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and
Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Thus, where such goods
are broadly described as to their nature and type, it is
presumed in each instance that in scope the application and

essential characteristics of the goods and differences in the marks."

Ser. No. 75/889,614
5
registration encompass not only all goods of the nature and type
described therein, but that the identified goods move in all
channels of trade which would be normal for those goods and that
they would be purchased by all potential buyers thereof. See,
e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Here, while applicant's "jeans, jeans tops and jeans
jackets" are goods which are necessarily limited to items of
clothing made of denim or other strong, coarse and durable
fabrics,4 such apparel is not otherwise restricted, especially
with respect to its use or function, and clearly would be
suitable, like registrant's jackets and one-piece overall riding
suits, as garments for motorcycle wear. Similarly, registrant's
"jackets and one-piece overall riding suits," although
specifically restricted to those marketed as "garments for
motorcycle riders," are not limited as to their composition and
thus could be made from denim or other durable fabric as well as
material traditionally associated with such apparel, namely,
leather. Both applicant's and registrant's goods, as
identified, therefore include jeans jackets for motorcycle wear
and, in any event, such jackets, along with jeans and jeans

4 We judicially notice in this regard that, for instance, The American
Heritage Dictionary of the English Language (3rd ed. 1992) at 498
defines "denim" as "1. a. A coarse twilled cloth, usually cotton, used
for jeans, overalls, and work uniforms" and at 965 lists "jean" as "1.
A heavy, strong, twilled cotton, used in making uniforms and work
clothes. 2. jeans. Pants made of jean, denim, or other durable
fabric."
Ser. No. 75/889,614
6
tops, plainly are closely related to one-piece overall riding
suits for motorcycle wear.
Moreover, even considering applicant's jeans jackets
to be specifically different from, rather than legally identical
to, registrant's jackets for motorcyclists, it is still the case
that jeans jackets, as well as jeans and jeans tops, are all
types of casual clothes which are purchased and worn by, among
others, the same classes of consumers as those, for instance,
who enjoy riding motorcycles and thus would purchase and wear
motorcycle jackets and one-piece overall riding suits. Because
the respective goods would, by their very nature and use,
clearly be offered and sold to the same classes of purchasers,
namely, motorcycle enthusiasts, and would be marketed through
the same or similar channels of trade, including motorcycle
shops, the use of the same or similar marks in connection
therewith would be likely to cause confusion as to source or
sponsorship.
This brings us to consideration of the marks at issue.
Applicant contends that its "MOTO JEANSWEAR" mark, "taken as a
whole, is dissimilar in overall sound, appearance and meaning"
from registrant's "MOTO WEAR" and design mark, which applicant
characterizes as essentially a "design mark," and that the two
marks "do not create the same overall impression." Among other
things, applicant submits that the "differences in sound and
Ser. No. 75/889,614
7
appearance are obvious," given that the term "JEANS" in its mark
lends such mark an additional syllable not present in
registrant's mark and that the latter includes a prominent,
multifaceted polygon which includes the colors red, green and
blue and represents the stylized letters "M" and "W." Applicant
contends, moreover, that in terms of meaning and commercial
impression, the respective marks are "quite different" and
unlikely to cause confusion because:
Applicant's mark MOTO JEANSWEAR
connotes a particular type of clothing (in
particular, jeans and denim material
clothes); the "moto" portion of the mark
being used in a completely arbitrary
fashion. In contrast, the Cited Mark
specifically connotes clothing (i.e.,
"WEAR") which is worn specifically by
motorcycle riders (i.e., "MOTO"), and in
fact is sold to them as such. Thus, since
the commercial impression[s] conveyed by the
marks are different, reversal ... on this
ground is requested.

We concur with the Examining Attorney, however, that
when considered in their entireties, applicant's mark "MOTO
JEANSWEAR" and registrant's mark "MOTO WEAR" and design are so
substantially similar, when used in connection with jeans, jeans
tops and jeans jackets and such identical in part and otherwise
closely related garments as motorcycle jackets and one-piece
overall riding suits, as to be likely to cause confusion as to
origin or affiliation. As the Examining Attorney accurately
points out in her brief, "the only difference between the word
Ser. No. 75/889,614
8
portions of the ... marks is the descriptive wording JEANSWEAR
in the Applicant's mark versus the descriptive wording WEAR in
the Registrant's mark." Given that the former simply describes
jeans and other apparel made from denim and similar fabrics
while the latter merely designates items of apparel in general,
such differences are not sufficient that the addition thereof to
the term "MOTO," even though regarded as suggestive of
motorcycle garments, results in marks which are distinguishable.
Rather, as properly noted by the Examining Attorney in her
brief:
The word portions of the marks MOTO
WEAR and MOTO JEANSWEAR share the terms MOTO
and WEAR, and therefore, look [quite] alike,
sound very similar and give [substantially]
the same commercial impression. The average
consumer would likely believe that the
sources for the goods were the same, or that
the Registrant had expanded his clothing
items to include motorcycle clothing items
made from the JEAN material.

Although applicant, as mentioned previously, also
rests a significant amount of its argument that confusion is not
likely on the fact that registrant's mark contains a prominently
colored display of the stylized letters "M" and "W" as a design
feature, the Examining Attorney properly notes that where a mark
consists of both a word portion and a design portion, it is
generally the word portion which is more likely to be impressed
upon a consumer's memory and to be used in calling for and/or
Ser. No. 75/889,614
9
asking about the goods. See, e.g., In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). Thus, and even
assuming that an appreciable number of consumers would, because
of the words "MOTO WEAR," recognize the design feature of
registrant's mark as consisting of the highly stylized letters
"M" and "W" and not just a multicolored hexagon, we agree with
the Examining Attorney that the terms comprising the literal
portions of the respective marks "are nearly identical in
appearance, sound and meaning" and that the design element in
registrant's mark "does not obviate the similarity between the
marks." Overall, such marks project substantially the same
commercial impression, particularly when allowance is made for
the fallibility of consumer memory and the corresponding general
rather than specific recollection of marks. See, e.g., Grandpa
Pidgeon's of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177
USPQ 573, 574 (CCPA 1973); Envirotech Corp. v. Solaron Corp.,
211 USPQ 724, 733 (TTAB 1981); and Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975.
Accordingly, we conclude that purchasers and potential
customers, who are familiar or acquainted with registrant's
"MOTO WEAR" and design mark for its "garments for motorcycle
riders; namely, jackets and one-piece overall riding suits,"
would be likely to believe, upon encountering applicant's
substantially identical "MOTO JEANSWEAR" mark for its "clothing,
Ser. No. 75/889,614
10
namely, jeans, jeans tops and jeans jackets," that such in part
legally identical and otherwise closely related articles of
apparel emanate from, or are sponsored by or associated with,
the same source. Such consumers, in particular, would be likely
to view applicant's "MOTO JEANSWEAR" products as a new or
expanded line from the makers of registrant's "MOTO WEAR" and
design motorcycle garments and vice versa.
Decision: The refusal under Section 2(d) is affirmed.