Fuchs

Trademark Trial and Appeal Board

May 8, 2009

No. 77134778 (T.T.A.B. May. 8, 2009)

Mailed:
May 8, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fuchs
________

Serial No. 77134778
_______

Sergie Orel of the Law Office of Sergie Orel, LLC for
Svetlana Fuchs.

Seth A. Rappaport, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Zervas, Kuhlke and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Svetlana Fuchs (“applicant”) filed an intent-to-use
application to register the mark BUMSUIT, in standard
character form, for “coats, corsets, footwear, jackets,
jogging suits, pants, petticoats, shirts, skirts and
dresses, suits, sweat suits, t-shirts, track suits, vested
suits, vests, headwear,” in Class 25.
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s
mark is likely to cause confusion with 14 registered marks
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77134778
2
owned by Bum Equipment LLC for various B.U.M. and BUM marks
for clothing. For purposes of this decision, we will focus
our analysis on Registration No. 2036311 for the mark BUM,
in typed drawing form, for the goods set forth below
because this mark is the closest to applicant’s mark.
Men’s and boy’s wearing apparel,
namely, t-shirts, sweatshirts, tank
tops, woven shirts, sweaters,
cardigans, vests, jackets, pants,
sweatpants, shorts, hats, caps, coats,
shoes, socks, and underwear; women’s
and girls wearing apparel, namely, t-
shirts, sweatshirts, tank tops, woven
shirts, sweaters, cardigans, vests,
jackets, pants, sweatpants, shorts,
skits, dresses, blouses, hats, caps,
coats, shoes, socks and underwear, in
Class 25.1

Our determination of likelihood of confusion 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 issue of 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

1 Issued February 11, 1997; Sections 8 and 15 affidavits accepted
and acknowledged; renewed.
Serial No. 77134778
3
services. See Federated Foods, Inc. v. Fort Howard Paper
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”).
A. The similarity or dissimilarity and nature of the
goods described in the application and registration.

The goods identified in the application and
registration are in part identical and otherwise closely
related.
Applicant’s Goods Coats, corsets, footwear,
jackets, jogging suits,
pants, petticoats, shirts,
skirts and dresses, suits,
sweat suits, t-shirts, track
suits, vested suits, vests,
headwear

Registrant’s Goods Men’s and boy’s wearing
apparel, namely, t-shirts,
sweatshirts, tank tops, woven
shirts, sweaters, cardigans,
vests, jackets, pants,
sweatpants, shorts, hats,
caps, coats, shoes, socks,
and underwear; women’s and
girls wearing apparel,
namely, t-shirts,
sweatshirts, tank tops, woven
shirts, sweaters, cardigans,
vests, jackets, pants,
sweatpants, shorts, skirts,
dresses, blouses, hats, caps,
coats, shoes, socks and
underwear
Serial No. 77134778
4
B. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because the goods identified in the application and
the cited registration are in part identical and otherwise
closely related, we must presume that the channels of trade
and classes of purchasers are the same. See Genesco Inc.
v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-
part identical and in-part related nature of the parties’
goods, and the lack of any restrictions in the
identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold
to the same classes of purchasers through the same channels
of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers”).
Applicant’s argument that the trade channels are
different (the registrant’s mark is for sports clothing
while applicant’s clothing will be a high class
sophisticated line of haute couture clothing) is misplaced.2
As noted in the preceding paragraph, where the goods are
identical, we must presume overlapping trade channels and
classes of purchasers. Octocom Systems, Inc. v. Houston

2 Applicant’s Brief, p. 5.
Serial No. 77134778
5
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 9
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that where, as here, the goods are closely
related, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there
is a recognizable disparity between the services. Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
Serial No. 77134778
6
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind,
85 USPQ2d 1104, 1108 (TTAB 2007).
Moreover, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average
customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975). In this case, the relevant public is the
general public.
It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in
Serial No. 77134778
7
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Thus, we find
the word “Bum” is the dominant portion of applicant’s mark
because the word “Suit” is descriptive when it is used in
connection with clothing. When used in connection with
clothing, “suit” means “a set of men’s garments of the same
color and fabric, consisting of trousers, a jacket, and
sometimes a vest” and “a similarly matched set of a skirt
and jacket, and sometimes a topcoat or blouse, worn by
women.”3 Therefore, the word “Bum” is accorded more weight
than the word “suit” in our comparison of the marks. In re
National Data Corp., 224 USPQ at 751.
The significance of the word “Bum” as the dominant
element of applicant’s mark is further reinforced by its
location as the first part of the mark. See Hercules Inc.
v. National Starch & Chemical Corp., 223 USPQ 1244, 1246
(TTAB 1984) (“considering the marks NATROL and NATROSOL in
their entireties, the clearly dominant aspect of both marks

3 The Random House Dictionary of the English Language
(Unabridged), p. 1902 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 77134778
8
is that the first four letters and the final two are the
same”). See also Presto Products Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered”);
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the
most prominent part of the mark VEUVE CLICQUOT because
“veuve” is the first word in the mark and the first word to
appear on the label); Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992) (upon encountering the marks, consumers
must first notice the identical lead word).
In comparing the two marks, we note that the
applicant’s mark contains the entire registered mark (i.e.,
BUM). Likelihood of confusion is often found where the
entirety of one mark is incorporated within another. In re
Denisi, 225 USPQ 624, 626 (TTAB 1985) (“the fact that
[applicant’s] mark herein [PERRY’S PIZZA] incorporates the
descriptive term ‘pizza’ as part of the mark presented for
registration does not obviate the likelihood of confusion
with the mark of the cited registration [PERRY’S]”);
Johnson Publishing Co. v. International Development Ltd.,
221 USPQ 155, 156 (TTAB 1982) (EBONY for cosmetics and
Serial No. 77134778
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EBONY DRUM for hairdressing and conditioner); In re South
Bend Toy Manufacturing Company, Inc., 218 USPQ 479, 480
(TTAB 1983) (LIL’ LADY BUGGY for toy doll carriages is
likely to cause confusion with LITTLE LADY for doll
clothing because “the word ‘buggy’ is clearly descriptive
of applicant’s doll carriage products” and “would fail to
alter the perceived identity of the dominant and more
arbitrary ‘LITTLE LADY’ and ‘LIL’ LADY’ elements of these
marks”).
We are not persuaded that the addition of the word
“suit” to applicant’s mark is sufficiently distinctive to
differentiate applicant’s mark from the registered mark in
any meaningful way. As indicated above, the word “suit” is
descriptive when used in connection with clothing thereby
making the word “Bum” the dominant portion of applicant’s
mark. In fact, the addition of the word “suit” in
applicant’s mark may increase the likelihood of confusion
because customers and potential customers may mistakenly
believe that applicant’s clothing is an expansion of the
registrant’s clothing line and that both products emanate
from the same source.
In attempting to distinguish the marks, applicant
focuses on registrant’s various B.U.M. marks but ignores
registrant’s BUM mark that we analyzed. With respect to
Serial No. 77134778
10
registrant’s other B.U.M. marks, we give little weight to
applicant’s argument that consumers encountering the B.U.M.
marks will pronounce the separate letters (B-U-M) and not
the word “bum.”4 We believe that the purchasing public
encountering registrant’s various B.U.M. marks will react
to them as if the marks were the word “bum.” B.V.D.
Licensing v. Body Action Design, 846 F.2d 727, 6 USPQ2d
1717, 1721 (Fed. Cir. 1988) (B.A.D. will be viewed as the
word “Bad”); Henry I. Siegel Co., Inc. v. Highlander, Ltd.,
183 USPQ 496, 499 (TTAB 1974) (H.I.S. will be pronounced as
“his”).
In view of the arbitrary nature of the registered mark
BUM, the lesser weight to be accorded the descriptive word
“suit” in applicant’s mark, and applicant’s incorporation
of the entire registered mark in its mark, we find that the
the marks are similar. Considering the similarities
between the marks, a purchaser who sees one mark and later
encounters the other on clothing is likely to view the
marks as variations of each other, representing a single
source. Accordingly, we conclude that the marks BUM and
BUMSUIT are similar in appearance, sound, meaning, and
commercial impression.

4 Applicant’s Brief, p. 4.
Serial No. 77134778
11
D. Applicant’s family of “Bum” marks.
Applicant argues that it is the owner of a family of
“Bum” marks comprising the marks BUMSUITS and BUMSIES, that
the application for BUMSIES has been published for
opposition and a notice of reliance has been issued, and
therefore, “the USPTO must be consistent in its analysis of
BUMSIES and BUMSUIT, and thus, the Examiner must
necessarily withdraw his 2(d) objection.”5
Applicant’s family of marks argument is misplaced. In
an ex parte appeal, the focus of the likelihood of
confusion analysis must be the mark applicant seeks to
register, not other marks applicant may have used or
registered. In other words, a “family of marks” argument
is not available to an applicant seeking to overcome a
likelihood of confusion refusal. In re U.S. Plywood-
Champion Papers, Inc., 175 USPQ 445, 446 (TTAB 1972)
(“Applicant's ownership and registration of marks other
than the mark sought to be registered herein is immaterial
and irrelevant to the specific issue before us, and cannot
justify the registration of what could be a confusingly
similar mark.” [citations omitted]); In re Ald, Inc., 148
USPQ 520, 521 (TTAB 1965) (“Likewise, in view of the

5 Applicant’s Brief, pp. 5-6.
Serial No. 77134778
12
specific prohibition of Section 2(d) of the Statute, the
fact that applicant may possess a ‘family’ of marks
characterized by the term ‘ALD’ is of no particular
significance herein if the mark for which applicant now
seeks registration, ‘ALDPRESS’, when considered in its
entirety, is confusingly similar to the previously
registered mark ‘ALLPREST’”). See also Baroid Drilling
Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048, 1052
(TTAB 1992) (“The issue under Section 2(d) is whether
applicant's mark sought to be registered, or respondent's
mark, the registration of which is sought to be cancelled,
so resembles plaintiff's registered and/or previously used
mark or marks as to be likely to cause confusion. Thus,
the fact that a plaintiff may rely upon any confusingly
similar mark which it has either registered or previously
used, is to be contrasted with the fact that a defendant,
whose sole mark in issue is its mark sought to be
registered or its mark sought to be cancelled, can rely
upon only its rights in that mark, except in very limited
situations”) (emphasis in the original).
With respect to applicant’s estoppel-like argument
that the Office must be consistent in its analysis of
BUMSIES and BUMSUIT, while the Office strives for
consistency, the Board must decide each case on its own
Serial No. 77134778
13
facts and record. In re Netts Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re International
Taste Inc., 53 USPQ2d 1604, 1606 (TTAB 2000). Section 20
of the Trademark Act of 1946, 15 U.S.C. §1070, gives the
Board the authority and duty to decide an appeal from an
adverse final decision of the Examining Attorney. This
duty may not be delegated by adoption of conclusions
reached by an Examining Attorney on a different record. In
re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986). We
are obviously not privy to the record in the BUMSIES
application and, in any event, the approval of that
application by the Examining Attorney cannot control the
result of this appeal.
E. Balancing the factors.
In view of the facts that the marks are similar and
that the goods are in part identical and otherwise closely
related, and because we must presume that the goods move in
the same channels of trade and are available to the same
classes of consumers, we find that applicant’s mark BUMSUIT
for “coats, corsets, footwear, jackets, jogging suits,
pants, petticoats, shirts, skirts and dresses, suits, sweat
suits, t-shirts, track suits, vested suits, vests,
headwear” is likely to cause confusion with the mark BUM
for “men’s and boy’s wearing apparel, namely, t-shirts,
Serial No. 77134778
14
sweatshirts, tank tops, woven shirts, sweaters, cardigans,
vests, jackets, pants, sweatpants, shorts, hats, caps,
coats, shoes, socks, and underwear; women’s and girls
wearing apparel, namely, t-shirts, sweatshirts, tank tops,
woven shirts, sweaters, cardigans, vests, jackets, pants,
sweatpants, shorts, skits, dresses, blouses, hats, caps,
coats, shoes, socks and underwear.”
Decision: The refusal to register is affirmed.