Federated Dept. Stores, Inc.v.Rosella S. Trombetta

Trademark Trial and Appeal Board

Jun 26, 1997

OPP (T.T.A.B. Jun. 26, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 26, 1997
Paper No.20
TJQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Federated Department Stores, Inc.
v.
Rosella S. Trombetta
_____
Opposition No. 94,008
to application Serial No. 74/324,855
filed on October 23, 1992
_____
Daniel Ebenstein and Chester Rothstein of Amster, Rothstein
& Ebenstein for Federated Department Stores, Inc.
Lowell J. Gordon for Rosella S. Trombetta.
______
Before Cissel, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Rosella S. Trombetta
to register the mark IN SYNC for "men's, women's and
children's clothing, namely, shirts, T-shirts, shorts,
pants, jeans, shoes, sneakers, blouses, skirts, vests,
sweaters, jackets, bras, briefs, pajamas, dresses,
Opposition No. 94,008
2
bodysuits, socks, scarves, ties, coats, nightgowns, gloves,
belts and hats."1
Registration has been opposed by Federated Department
Stores, Inc. under Section 2(d) of the Act on the ground
that applicant's mark, when applied to applicant's goods, so
resembles opposer's previously used mark IN SYNC for young
men's clothing and retail store services in connection with
the sale of such clothing, as to be likely to cause
confusion.
Applicant, in her answer, denied the salient
allegations of likelihood of confusion.
The record consists of the pleadings; the file of the
involved application; trial testimony (with related
exhibits) taken by each party; portions of a discovery
deposition,2 applicant's answers to two of opposer's
interrogatories and an excerpt from a printed publication,3

1Application Serial No. 74/324,855, filed October 23, 1992,
alleging a bona fide intention to use the mark in commerce.
2Opposer, on March 4, 1996, filed a motion to allow the
introduction into evidence of portions of the discovery
deposition of Robert A. Edis, a non-party to this proceeding.
For the reasons set forth in opposer's motion, and inasmuch as
applicant has not objected thereto (in fact, applicant suggested
that opposer take Mr. Edis' deposition), the motion is granted.
Trademark Rules 2.120(j)(1) and 2.127(a).
3We are unsure as to whether the audit report, identified as
"Exhibit C" in the notice of reliance, is a "printed
publication" as contemplated by Trademark Rule 2.122(e). That
is to say, opposer has provided no information regarding whether
the report is "available to the general public in libraries or
of general circulation among members of the public or that
segment of the public which is relevant under an issue" in this
proceeding. Nevertheless, applicant did not object to this
evidence and, accordingly, we have considered it. Trademark
Trial and Appeal Board Manual of Procedure, § 708. Even if not
considered, we would reach the same result in this case.
Opposition No. 94,008
3
all made of record by way of opposer's notice of reliance.
Only opposer filed a brief on the case.4 An oral hearing
was not requested.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods.
In the present case, the marks are identical. Further,
as demonstrated by the record, opposer's and applicant's
marks are used on identical and/or substantially similar
clothing items. Moreover, opposer's retail store services
involving young men's clothing are substantially similar to
applicant's clothing items.
In view of the above, this case turns on the question
of priority. Opposer introduced the testimony, together

4Opposer raises, for the first time in its brief (pp. 12-13),
issues regarding applicant's first use. More specifically,
opposer alleges that the first sales were not made by applicant
and that the first use was merely ornamental. To the extent
that opposer is raising these issues as additional claims for
relief, suffice it to say that the notice of opposition was not
amended accordingly, and the issues were not tried, either
expressly or implicitly, by the parties. Fed. R. Civ. P. 15(a)
and (b). See: Trademark Trial and Appeal Board Manual of
Procedure § 321. In any event, inasmuch as the involved
application is based on an intention to use, opposer's use, in
order to prevail on priority, must predate the filing date of
the application (that is, applicant's constructive use date).
Thus, the bona fides of applicant's later use are irrelevant to
the priority question.
Opposition No. 94,008
4
with related exhibits, of Carey Watson, a senior vice
president of marketing with Burdine's, a chain of stores
owned by opposer. Mr. Watson detailed the adoption and
continuous use of the mark IN SYNC since April 1991, that
is, prior to the earliest date upon which applicant can
rely. Mr. Watson testified that opposer began using the
mark IN SYNC as the name of the young men's clothing
department in its Burdine's stores located throughout
Florida. Later, opposer expanded use of its mark IN SYNC to
other department stores it owned in the mid-west, the south
and the southeast. The mark has appeared on point of sale
signs, and in advertisements and direct mailings.5
We find that the record clearly establishes opposer's
priority of use in connection with clothing and retail store
services involving clothing.
We conclude that consumers familiar with opposer's
previously used mark IN SYNC for retail store services
involving young men's clothing and items of young men's
clothing would be likely to believe, upon encountering
applicant's mark IN SYNC for men's, women's and children's
clothing items, that the goods and services originated with
or were somehow associated with or sponsored by the same
entity.
Decision: The opposition is sustained and registration
to applicant is refused.

5The signs, as shown, for example, in opposer's exhibit nos. 11
and 14, qualify as displays associated with the goods.
Opposition No. 94,008
5
R. F. Cissel
T. J. Quinn
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board