Fans London Ltd.

Trademark Trial and Appeal Board

Aug 8, 2000

No. 75185247 (T.T.A.B. Aug. 8, 2000)

Paper No. 11
8/8/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fans London Limited
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Serial No. 75/185,247
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Jody H. Armstrong of Killworth, Gottman, Hagan & Schaeff,
L.L.P. for Fans London Limited.
Robert Clark, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Simms, Cissel and Quinn, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On October 22, 1996, applicant, a company organized
under the laws of England and Wales, filed an application
in United States Patent and Trademark Office to register
the mark “FANS LONDON” on the Principal Register for what
were subsequently identified by amendment as “handbags;
trunks and suitcases; briefcases; tote bags; rucksacks;
backpacks; shoulder bags; duffel bags; toiletry bags, sold
empty and vanity cases sold empty; waist bags; articles of
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/185,247
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luggage; purses; wallets; key fobs; key cases; umbrellas;
parasols; animal skins and animal hides; leather, imitation
leather and moleskin sold in bulk, and articles made of
those materials; namely, handbags, trunks and suitcases,
briefcases, tote bags, rucksacks, backpacks, shoulder bags,
duffel bags, toiletry bags, sold empty, and vanity cases,
sold empty, waist bags, articles of luggage, purses,
wallets, key fobs, key cases, umbrellas and parasols," in
Class 18; and “articles of clothing; namely stockings,
tights; shirts, t-shirts, casual tops and polo shirts,
sweatshirts, jeans, trousers, shorts, waistcoats, suits,
pullovers, sweaters, skirts, leggings, tops, dresses,
blouses, cardigans; underwear; hosiery; coats; jackets;
shawls; hats; scarves, socks, gloves, belts, ties, cravats;
headwear and footwear; shoes; slippers; boots,” in Class
25. The stated basis for filing the application was
applicant’s assertion that it possessed a bona fide
intention to use the mark in commerce in connection with
the specified goods. The application was amended to
disclaim the exclusive right to use “LONDON” apart from the
mark as shown.
This case now comes before the Board on appeal from
the Examining Attorney’s final refusal to register the mark
under Section 2(d) the Lanham Act on the ground that
Ser No. 75/185,247
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applicant’s mark, if used in connection with the Class 25
goods set forth in the application,1 would so resemble the
mark shown below
which is registered2, with a disclaimer of the word “GEAR,”
for “jackets, coats, warm-up suits, and windsuits,” in
Class 25, that confusion would be likely.
Both applicant and the Examining Attorney filed appeal
briefs, but applicant did not request an oral hearing
before the Board. Based on a careful consideration of the
written record and the arguments presented on appeal, we
hold that the refusal to register is appropriate in this
case because if applicant were to use the mark it seeks to
register in connection with the goods in Class 25 specified
in the application, confusion would be likely in view of
the cited registered mark.

1 The refusal to register originally had been extended to the
goods in Class 18, but the Examining Attorney withdrew the
refusal as to the goods in that class.
2 Reg. No. 2,077,125 issued on the Principal Register on July 8,
1997 to Pro Player, Inc. Use in commerce since May of 1994 is
claimed in the registration.
Ser No. 75/185,247
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In In re duPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973), the predecessor of our primary
reviewing court listed the principal factors to be
considered in determining whether a likelihood of confusion
exists. Chief among these factors are the similarity of
the marks as to appearance, sound, meaning and commercial
impression, and the commercial relationship between the
goods or services in question, including the channels of
trade through which the goods or services move and the
level of sophistication of the respective purchasers of
them.
In the instant case, confusion would be likely because
the Class 25 goods specified in the application are in part
identical and are otherwise closely related to the goods
listed in the registration (both are for related items of
apparel and both include “jackets”), and the mark applicant
seeks to register is similar to the mark shown in the
registration.
It is well settled that in a situation where the goods
are identical, in order for confusion to be likely, the
marks in question do not have to be as much alike as would
be the case if the products they identified were not the
same. ECI Division of E Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443 (TTAB 1980).
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In the case at hand, however, the marks are quite
similar because the dominant portion of each is the same
word, “FANS.” Although whether confusion is likely must
always rest on comparison of the marks in their entireties,
nevertheless, one feature or word in a particular mark may
be recognized as having greater source-identifying
significance than others. In re National Data Corp., 732
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Typically, terms
that are merely descriptive of the goods in question or are
geographically descriptive of them carry less weight in
this regard than words or designs which are arbitrary or
fanciful. In re Continental Graphics Corp., 52 USPQ2d 1374
(TTAB 1999); and In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987).
In the instant case, although the registered mark is
presented in a somewhat stylized form, the word “GEAR” is
shown only in small block letters along the shading below
the letter “S” in the stylized presentation of the word
“FANS.” None of the design or sylistic elements is
particularly distinctive. The word “FANS” is clearly the
dominant portion of the registered mark. “FANS” is three
or four times larger than the descriptive, clearly
subordinate term “GEAR,” which has little or no trademark
significance itself in connection with the apparel items
Ser No. 75/185,247
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and accessories listed in the registration, and accordingly
has been disclaimed.
The same word “FANS” is also the dominant portion of
the mark applicant seeks to register. The geographically
descriptive, and hence disclaimed, word “LONDON” would be
readily understood as an indication that the goods bearing
applicant’s mark emanate from the capital of England or are
styled like clothing popular there. As used in the mark
“FANS LONDON,” “FANS” does not appear to have any
descriptive or suggestive significance in connection with
clothing. This apparently arbitrary word plainly would
have more significance than “LONDON” as an indication of
the commercial source of the goods.
Confusion would be likely if both the registered mark
and the mark applicant seeks to register were to be used on
jackets because “FANS” is the dominant element of each
mark. Purchasers familiar with clothing sold under the
registered mark would likely interpret the mark “FANS
LONDON” on identical clothing items as an indication that
they come from the London branch or affiliate of the
business responsible for other clothing labeled “FANS
GEAR,” or even that "FANS LONDON” is used to emphasize the
fact that registrant’s jackets are made in or styled in the
fashion of London.
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Applicant’s arguments that confusion would not be
likely if it were to use the mark it seeks to register on
the goods listed in the application are not persuasive.
Applicant submitted copies of the results of its
search of a private database of registration information.
The print-outs purport to show the registration of several
third-party marks incorporating “FAN.” Applicant argues
that this evidence shows “that the common use of this term
renders it less prominent for purposes of comparison.”
(brief, p.13). Copies of these alleged registrations were
not submitted, but even copies of these registrations would
not show use of the marks therein, however, such that the
Board could conclude that the apparel-purchasing public has
been exposed to the use and promotion of marks with “FANS”
as a component to the extent that other elements in such
marks serve to distinguish the sources of the products
which bear them. Lilly Pulitzer, Inc. v. Lilli Ann Corp.,
376 F.2d 324, 153 USPQ 406 (CCPA 1967).
Applicant contends that the coexistence of these
registrations on the register, including several for marks
which were originally cited as bars to the instant
application under Section 2(d) but later withdrawn, is an
indication that applicant’s mark could coexist on the
register as well. It is well settled, however, that even
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if it appears that marks likely to cause confusion with
each other have been registered, this does not justify
registration of yet another mark which would be likely to
cause confusion with any of them. Lilly Pulitzer, Inc. v.
Lilli Ann Corp., supra.
In summary, if applicant were to use the mark it seeks
to register on the Class 25 goods listed in the
application, the ordinary consumers who purchase clothing
who are familiar with the cited registered mark for jackets
would be likely to believe that registrant is the source of
applicant’s jackets. This is precisely the kind of
confusion that Section 2(d) of the Act is intended to
avoid. If we were left with any doubt as to whether
confusion would be likely, such doubt would have to be
resolved in favor of the registrant and against the
applicant, who, as the newcomer, had a duty to choose a
mark that would not be likely to cause confusion with the
prior used and registered mark. Burroughs Wellcome Co. v.
Warner-Lambert Co., 203 USPQ 191 (TTAB 1979).
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Accordingly, the refusal to register as to the goods
in Class 25 is affirmed. Upon expiration of the period in
which applicant may appeal this ruling, the application
will be forwarded for publication as to the goods in Class
18.
R. L. Simms
R. F. Cissel
T. J. Quinn
Administrative Trademark Judges,
Trademark Trial & Appeal Board
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