Genesco Inc.v.Street Beat Sportswear, Inc.

Trademark Trial and Appeal Board

Nov 16, 1998

No. 91095686 (T.T.A.B. Nov. 16, 1998)

Hearing: Paper No. 31
September 4, 1997 ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB NOV. 13, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Genesco Inc.
v.
Street Beat Sportswear, Inc.
_____
Opposition No. 95,686
to application Serial No. 74/469,169
filed on December 13, 1993
_____
Virginia S. Taylor of Kilpatrick & Cody for Genesco Inc.
Stephen L. Baker of Baker & Friedman for Street Beat
Sportswear, Inc.
______
Before Simms, Cissel and Seeherman, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Genesco Inc. has opposed the application of Street Beat
Sportswear, Inc. to register STREET CODE for “clothing,
namely: hats, scarfs, blouses, vests, jackets, sweaters,
t-shirts, tops, dresses, pants, skirts, shirts, bottoms,
Opposition No. 95,686
2
hosiery, shoes, slippers, boots.”1 As grounds for
opposition, opposer asserts that it has used and owns
registrations for the marks STREET HOT and STREET HOT and
design for shoes and footwear, and for CODE WEST for jackets
and shirts, shoes and boots, and retail store services in
the field of apparel and footwear; that since prior to the
filing date of applicant’s application, opposer has used its
marks STREET HOT and CODE WEST in connection with footwear,
apparel and related accessories; and that applicant’s mark
so resembles opposer’s marks that, if used on the goods
identified in the application, it would be likely to cause
confusion, mistake or deception.
In its answer, applicant denied the salient allegations
of the notice of opposition, and asserted affirmatively,
inter alia, that the individual elements of opposer’s mark
are widely used and are weak, and that “Opposer admitted the
weakness of its alleged mark when it applied to register the
same over prior registration [sic] which included the
individual elements of Opposer’s alleged marks.”2
Subsequently, the Board granted opposer’s uncontested
motion to amend the notice of opposition to delete all

1 Application Serial No. 74/469,169, filed December 13, 1993,
based on an asserted bona fide intent to use the mark in
commerce.
2 Applicant referred to opposer’s mark in the singular, despite
the fact that opposer pleaded ownership of two different marks.
Applicant did not indicate in its answer to which mark it was
referring, although the comments made in its brief show that the
mark was CODE WEST.
Opposition No. 95,686
3
references to the marks STREET HOT and STREET HOT and
design, which opposer had sold, and to include an allegation
of an additional registration, No. 1,872,558, for CODE WEST
for shoes, boots, shirts and jackets, which issued after the
original notice of opposition was filed.3
The record includes the testimony depositions, with
exhibits, of opposer’s witness George Andrew Gill.4 Opposer
also made of record, under a notice of reliance, copies of
Office records showing that opposer herein opposed an
application by a third party for the mark CODE-3S which
resulted in the abandonment of that application, and that
its opposition to the registration of another party’s
application for CODE BLEU for footwear was sustained as a
result of that party’s failure to file an answer to the
notice of opposition. Opposer has also submitted, under a

3 Because of the way the proceeding transpired, applicant did
not file an answer to the amended notice of opposition; rather,
the parties and the Board treated the proceeding as though
applicant had reiterated its denials, and had denied the
allegation with respect to Registration No. 1,872,558.
4 In its brief applicant has objected to Mr. Gill’s testimony as
being incompetent to prove the advertising and sales figures
which he provided. This objection is not well taken. Mr. Gill’s
testimony included the statements that he is familiar with the
history of the CODE WEST trademark, and that his testimony was
based on personal knowledge and upon his familiarity with the
books and records of opposer, which are maintained under his
supervision. Such statements adequately establish Mr. Gill’s
competence to testify. Moreover, it is noted that applicant did
not attend Mr. Gill’s testimony deposition, and therefore did not
raise any objections about his testimony at a point where any
perceived infirmities could be cured. If a ground for objection
might have been obviated or removed if presented during the
deposition, and the objection is not timely raised, it will be
Opposition No. 95,686
4
notice of reliance, status and title copies of opposer’s
four pleaded registrations for CODE WEST for sportswear,
namely, jackets and shirts;5 for shoes and boots;6 for
retail store services in the field of apparel and footwear;7
and for CODE WEST, in the design form shown below, for
footwear and clothing; namely, shoes, boots, shirts and
jackets.8
Applicant has submitted, under notice of reliance,
copies of applications and registrations for marks which
contain the word CODE or WEST; a copy of the cover and title
page of the Zane Grey novel, Code of the West; articles
taken from newspapers and magazines which use the phrases
“code of the West” or “street code”; and what applicant
describes as “articles” published on the Internet which
include the word(s) “code,” “street code” and “code of the

deemed to be waived. See TBMP ∋ 718.03(c) and cases cited
therein.
5 Registration No. 1,654,968, issued August 27, 1991. We take
judicial notice of the Office records, which show that a Section
8 affidavit was accepted for this registration subsequent to the
date the status and title copy was made of record. See TBMP ∋
703.02(a) and cases cited therein.
6 Registration No. 1,495,199, issued July 5, 1988; Section 8
affidavit accepted; Section 15 affidavit received.
7 Registration No. 1,769,020, issued May 4, 1993.
8 Registration No. 1,872,558, issued January 10, 1995.
Opposition No. 95,686
5
west” as well as “articles” from the Internet about Zane
Grey.9
The parties have fully briefed the case, and both were
represented at an oral hearing before this Board.
The record shows that opposer sells, inter alia, boots,
shoes and other clothing items under the mark CODE WEST, and
also operates, under the stylized CODE WEST mark shown
above, retail stores featuring boots. Opposer started
marketing its CODE WEST products in 1987, and sells its
footwear in all 50 states, and in virtually all trade
channels for shoes and boots in the United States. These
include upper-end department stores like Nordstrom’s, chain
stores like Sears and Kenney’s, independent shoe stores,
mom-and-pop stores, farm stores, western chains like Boot
Town, and discount retailers. Opposer’s CODE WEST footwear
is also sold through catalogs.

9 Although applicant has referred to the Internet materials as
articles, as far as can be ascertained from the submissions, they
are available only on the Internet, and there is no
identification of a permanent source for the materials.
Accordingly, they cannot be considered as printed publications,
which may be made of record under a notice of reliance in
accordance with Trademark Rule 2.122(e). See Racioppi v. Apogee
Inc., 47 USPQ2d 1368 (TTAB 1998). However, materials improperly
offered under Rules 2.122(e) may nevertheless be considered by
the Board if the adverse party does not object thereto. See TBMP
∋ 708, and cases cited therein. Because opposer never raised an
objection to the Internet materials, and indeed has treated the
materials as of record (although in terms of stating that
applicant’s reliance on them is “bizarre”, reply brief, p. 7),
the Board has considered them.
Opposition No. 95,686
6
Since 1987 its annual sales of CODE WEST boots and
shoes at wholesale have ranged from $4 million in 1989 to a
high of $27.2 million in 1993. Retail sales would be
approximately double those numbers. Over 13 million pairs
of CODE WEST boots were sold between 1987 and the taking of
opposer’s witness’s deposition in June 1996.
Opposer has advertised its CODE WEST products in
catalogs and print advertising, including in such magazines
as “Esquire,” “Elle” and “Vogue,” and has exhibited its
footwear and apparel at trade shows. Annual advertising
costs from 1989 to 1993 were in the $1 million to $2 million
range, although these expenditures dropped to $330,000 in
1994 and $90,000 in 1995. The products have also been
advertised directly by retailers in newspapers, on
television and radio, and through direct mail and
billboards.
Applicant has not furnished any evidence regarding its
business or activities under the mark, which we note has
been applied for under the provisions of Section 1(b) of the
Act.
Priority is not in issue in view of opposer’s
registrations, which have been made of record. King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). Moreover, the evidence shows that
opposer has used its CODE WEST mark on at least boots since
Opposition No. 95,686
7
prior to December 13, 1993, the filing date of applicant’s
intent-to-use application and the earliest date on which it
is entitled to rely.
Turning to the issue of likelihood of confusion, there
is no question that the jackets, t-shirts, tops, shoes and
boots identified in applicant’s application must be deemed
to be legally identical to the jackets, shirts, shoes and
boots identified in opposer’s registrations. Similarly,
these goods must be deemed to travel in the same channels of
trade, and to be sold to the same consumers. These duPont
factors clearly favor opposer. E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
We recognize that “when marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). However, in this case the marks are sufficiently
different that we find confusion is not likely to occur.
While both marks include the word CODE, when they are
considered in their entireties, they are very different in
appearance, pronunciation and connotation. The order in
which CODE appears in the marks is reversed, with STREET
having a prominent place in applicant’s mark because it
appears and is pronounced first. We cannot agree with
Opposition No. 95,686
8
opposer’s assertion that CODE is the dominant part of both
marks because a trade magazine referred to a footwear
fashion as “street fashions.” Further, although the word
WEST, particularly when used in a mark for boots, suggests
western fashions, we do not believe that CODE is the
dominant part of opposer’s marks. Rather, the marks CODE
WEST and STREET CODE must both be regarded as unitary marks,
in which each resultant phrase has a meaning different from
that of the individual words.10
With respect to the meanings of the marks, both opposer
and applicant agree that opposer’s mark, CODE WEST, would be
seen as referring to the “Code of the West.” This phrase,
as shown by the newspaper articles and Internet materials
submitted by applicant, refers to a code of conduct taken
from the Old West of the cowboy era, and encompasses such
values as honesty, respect for women, defending the
defenseless, and “a man’s word is his bond.” “Street Code,”
on the other hand, connotes the philosophy of today’s inner
cities, an ethos of gangs and those who live on the streets.
Principles of “street code,” as reported in the articles and
Internet materials submitted by applicant, include “You tell
on someone, you die”; witnesses do not talk to police; and
one does not murder children or officers of the court.

10 For the same reason, we reject applicant’s argument that the
word CODE “must be given little consideration in determining the
Opposition No. 95,686
9
Opposer argues that applicant’s mark has a parallel
meaning to opposer’s, with opposer’s referring to the “Code
of the West” and applicant’s to “Code of the Street.”
Although there may be a superficial similarity in that both
marks refer loosely to unwritten rules, the two philosophies
are themselves so different that we do not believe that
consumers would associate them with the same source. CODE
WEST represents a philosophy that is generally admired and
respected; it is a compliment to say that one lives by the
“Code of the West.” STREET CODE, on the other hand, is
associated with negative characteristics; one article
describes it as a culture which is oppositional to that of
decent family middle-class values. Because of the negative
connotations of STREET CODE, it is unlikely that consumers
would see clothing and footwear sold under this mark as a
line extension of opposer’s CODE WEST boots, shoes, jackets
and t-shirts.
In reaching this decision we have rejected opposer’s
argument that its mark is famous. Although opposer has
submitted evidence of its sales and advertising, it has not
put those sales and advertising figures in context, such as
by showing its market share. Raw sales and advertising
figures, unless they are extraordinarily large, which is not
the case with opposer’s products, are not sufficient by

issue of confusing similarity/likelihood of confusion.” Brief,
Opposition No. 95,686
10
themselves to establish that a mark is famous. See Fossil,
Inc. v. The Fossil Group, __USPQ2d__, Op. 98,191 (TTAB
Oct. 30, 1998); General Mills Inc. v. Health Valley Foods,
24 USPQ2d 1270, 1277 (TTAB 1992). We also note that, while
opposer’s sales and advertising figures had increased from
1989 through 1993, in 1994 its sales dropped from over $27
million to $12.4 million and in 1995 to $8.6 million, the
latter figure representing sales of only 156,650 pairs of
boots. Its advertising expenditures similarly dropped from
$1.9 million in 1993 to $330,000 in 1994 and $90,000 in
1995.
Thus, although we acknowledge that in certain cases the
fame of a mark can play a dominant role in determining the
issue of likelihood of confusion, it does not play such a
role in the present situation.
Although we have not found opposer’s mark to be famous,
we cannot agree with applicant’s argument that “the
designation ‘code’ has been adopted by so many third parties
for clothing that Opposer’s alleged mark is entitled to only
a very narrow scope of protection.” Brief, p. 26.
Applicant bases this argument on the various third-party
registrations and applications which it has made of record.
However, as opposer has correctly pointed out, third-party
registrations are not evidence of use of the marks shown

p. 21.
Opposition No. 95,686
11
therein or that the public is familiar with them. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Third-party registrations may, of course, be used to
show that a portion of a mark has a meaning, and as a result
that the inclusion of the particular term in both an
opposer’s and applicant’s mark may be an insufficient basis
on which to find a likelihood of confusion. Cutter
Laboratories, Inc. v. Air Products and Chemicals, Inc., 189
USPQ 108 (TTAB 1975). However, in this case, although
applicant has made numerous third-party registrations of
record, the meanings conveyed by the word CODE in these
marks differ. For example, there are registrations for AREA
CODE 212, ZIP CODE, SECRET CODE, D-CODE and PRODUCT CODE 31.
The only registrations in which CODE appears to refer to a
philosophy or ethic are FOR THOSE WHO LIVE BY A CODE,
BUSINESS CODE, CITY CODE, and perhaps CODE per se.
In summary, although opposer’s mark CODE WEST must be
considered a distinctive and strong mark for boots, this
does not mean that opposer is entitled to prevent the
registration of any marks which contain the word CODE.
Here, when we consider the marks in their entireties,
because of the differences in appearance, pronunciation,
connotation and commercial impression between CODE WEST and
STREET CODE, we find that confusion is not likely, even when
the respective marks are both used on boots and shoes.
Opposition No. 95,686
12
Opposition No. 95,686
13
Decision: The opposition is dismissed.
R. L. Simms
R. F. Cissel
E. J. Seeherman
Administrative Trademark Judges
Trademark Trial and Appeal Board