Garment Group of California

Trademark Trial and Appeal Board

Sep 9, 1998

No. 74707092 (T.T.A.B. Sep. 9, 1998)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 9, 98
Paper No. 9
RFC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Garment Group of California
________
Serial No. 74/707,092
_______
Thomas Rozsa of Rozsa & Chen LLP for Garment Group of
California.
Sue Carruthers, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Cissel, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 28, 1995, applicant, a California general
partnership, filed the above-referenced application to
register the mark “GIORGIO BELLINI” on the Principal
Register for “garments, namely men’s socks,” in Class 25.
Use of the mark in interstate commerce since May 18, 1995
was claimed as the basis for the application. Applicant
stated that “GEIRGIO BELLINI” is a fanciful name and is not
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the name of any living individual known to applicant or
associated with applicant.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act on the ground that
applicant’s use of “GIORGIO BELLINI” on men’s socks so
resembles three registered marks, “BELLINI” for women’s
footwear 1, “BELLINI KIDS” for children’s footwear 2, and
which is registered for women’s non-athletic leather and
leather-like shoes and espadrilles 3, that confusion is
likely.
Applicant responded to the refusal to register with
argument that confusion is not likely, but the Examining
Attorney was not persuaded. The refusal to register was
made final in the second Office Action on October 30, 1996.
Attached to that Office Action were copies of eleven third-
party registrations wherein the lists of goods include both
men’s socks and women’s footwear.

1 Reg. No. 1,408,592, issued on the Principal Register to Bellini
Imports Ltd. on September 9, 1986; combined affidavit filed under
Sections 8 and 15; now owned by M. C. Shoe Co., Inc.
2 Reg. No. 1,796,450, issued on the Principal Register to M. C.
Shoe Co., Inc. on October 5, 1993.
3 Reg. No. 1,564,623, issued on the Principal Register to Bellini
Imports, Ltd. on November 7, 1989; Section 8 affidavit filed;
assigned to M. C. Shoe Co., Inc.
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On June 27, 1997, applicant filed a combined notice of
appeal and appeal brief, but did not request an oral
hearing before the Board. The Examining Attorney timely
filed her brief on September 4, 1997. Applicant did not
file a reply to it.
Based on careful consideration of the record in this
appeal, the arguments made by applicant and the Examining
Attorney, and the relevant legal principles and precedents,
we conclude that the refusal to register is appropriate
because the marks in question are similar, and the goods
set forth in the application are commercially related to
those listed in the cited registrations.
The factors which may come into play in resolving the
issue of whether confusion is likely in a given case were
listed by our primary reviewing court in In re E. I. duPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Relevant factors to the case at hand are the similarity of
the marks as they are applied to the goods of the applicant
and the registrant, respectively; the similarity of the
goods as they are identified in the application and the
registrations; the similarity of the established, likely to
continue channels of trade through which the goods move,
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and the conditions under which, and buyers to whom, sales
of these goods are made.
Applicant argues that consideration of these factors
leads to the conclusion that confusion is not likely, but
we disagree.
Two of the registered marks are essentially the
surname “BELLINI,” and the third combines “BELLINI” with
the descriptive (and hence disclaimed) word “KIDS.”
Applicant has appropriated the same surname which dominates
all three of the registered marks and merely added to it a
given name, “GIORGIO.”
The Examining Attorney cites a number of previous
decisions of the Court and of this Board which stand for
the proposition that simply adding descriptive and/or
subordinate words to a registered mark is not sufficient to
avoid a likelihood of confusion. Further, she cites
another group of cases wherein it was held that confusion
is not avoided by adding a given name to a surname which is
registered by itself.
We agree that both of these principles are applicable
to the situation presented in the instant application.
Apparel purchasers who are familiar with the use of either
of the “BELLINI” marks or the “BELLINI KIDS” mark on the
footwear sold by the registrant under these marks are
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likely, when presented with related goods offered under the
mark “GIORGIO BELLINI,” to assume that a single source,
probably controlled or headed by a man named Giorgio
Bellini, is responsible for them all. The purchaser may
figure that different product lines or quality levels are
sold by this enterprise under different versions of Mr.
Bellini’s name, e.g., his surname by itself, his given name
by itself, or both his given name and his surname together,
but the assumption would likely be that “GIORGIO BELLINI”
products come from the same source as “BELLINI” and
“BELLINI KIDS” goods do.
As pointed out by the Examining Attorney, the issue is
whether the marks, when considered in their entireties,
create similar overall commercial impressions. Visual
Information Institute, Inc. v. Vicon Industries, Inc., 209
USPQ 179 (TTAB 1980). The average ordinary consumer, who
is the normal purchaser for both registrant’s footwear and
applicant’s socks, is known to have imperfect recall, and
ordinarily retains a general, rather than specific,
impression of the trademarks on the products he or she
buys. Chemetron Corp. v. Morris Coupling & Clamp Co., 193
USPQ 537(TTAB 1979). Socks and footwear are not
necessarily bought with great care after somber reflection
by sophisticated purchasers.
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Under these circumstances, applicant’s mark, “GIORGIO
BELLINI,” as applied to men’s socks, creates a commercial
impression similar to the ones generated by the registered
marks for footwear, each of which has the name “BELLINI” as
its dominant component.
Turning then to the remaining duPont factors to which
the record in this appeal relates, we find that the goods
set forth in the application are related to the goods
listed in the cited registrations. When these products are
sold under these similar marks, purchasers would assume
that they emanate from a single source.
The Examining Attorney cites a number of prior
decisions in which various items of clothing have been held
to be related. None of these cases, however, presents the
precise factual situation which exists in the case at hand,
and it is axiomatic that each case before us must be
decided on its own merits and facts.
As a general rule, in order for the Board to find that
confusion is likely when similar marks are used, the goods
on which they are used do not need to be identical, or even
competitive, for that matter. All that is necessary is
that the products be related in some way, such that the
conditions surrounding their marketing make it so that they
can be encountered by the same purchasers under
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circumstances that could give rise to the mistaken belief
that the goods come from the same source. In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
While the goods in question here, men’s socks, on one
hand, and women’s and children’s footwear, on the other,
are plainly not identical, they are sold in the same
places, such as retail shoe stores and department stores,
and they are purchased by the same types of people,
ordinary consumers, for related purposes.
Further, the Examining Attorney introduced the
evidence of third-party registrations wherein the goods
listed include both men’s socks and women’s footwear. That
so many registrations cover both kinds of products suggests
that purchasers have a reasonable basis for expecting these
types of goods to emanate from a single source. In re
Albert Trostel & Sons, 29 USPQ2d 1783 (TTAB 1993).
In summary, we find confusion to be likely because
these marks create similar commercial impressions and the
goods specified in the application are commercially related
to the products listed in the cited registrations. Even if
we had any doubt as to this conclusion (and we do not),
such doubt would necessarily be resolved in favor of the
registrant and against applicant, who, as the newcomer, had
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a duty to select a trademark which is dissimilar to the
marks already in use and registered for the same or related
goods. In re Hyper Shoppes(Ohio) Inc., 6 USPQ2d 1025 (Fed.
Cir. 1988).
The refusal to register is accordingly affirmed.
R. F. Cissel
E. W. Hanak
T. J. Quinn
Administrative Trademark Judges
Trademark Trial & Appeal Board
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