George R. Chaby, Inc.

Trademark Trial and Appeal Board

Aug 4, 2004

No. 76334833 (T.T.A.B. Aug. 4, 2004)

4 August 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re George R. Chaby, Inc.
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Serial No. 76334833
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Eric S. Marzluf of Caesar, Rivise, Bernstein, Cohen &
Pokotilow, Ltd. for George R. Chaby, Inc.
Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 113 (Odette Bonnet, Managing Attorney).
_______
Before Seeherman, Rogers, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On November 6, 2001, George R. Chaby, Inc. (applicant)
applied to register the mark NEWPORT RAINGEAR (in typed
form) on the Principal Register for goods ultimately
identified as “umbrellas” in International Class 18 and
“raingear, namely rain-resistant ponchos” in International
Class 25.1 Applicant disclaimed the word “Raingear.”
1 Serial No. 76334833. The application was based on applicant’s
assertion of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76334833
2
The examining attorney refused to register the mark
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because of two registrations for the mark
NEWPORT, both in typed form. The first registration is for
“suitcases, valises, and travelling bags” in International
Class 18.2 The second registration is for “outer shirts” in
International Class 25.3
After the examining attorney made the refusal final,
this appeal followed.
When a mark has been refused registration under
Section 2(d), we analyze the facts as they relate to the
relevant factors set out in In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). See
also In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973); and Recot, Inc. v. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
2 Registration No. 1,425,753, issued January 20, 1987.
Affidavits under Section 8 and 15 accepted and acknowledged. The
registrant is identified as Airway Industries, Inc.
3 Registration No. 639,730, issued January 8, 1957. USPTO
records indicate that the registration was renewed for a period
of ten years in 1997. The current owner is identified as Flag
Sportswear, Inc.
Ser No. 76334833
3
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
The first factor we will address is the similarity of
the applicant’s and registrants’ marks. Applicant’s mark
is NEWPORT RAINGEAR while the cited registrations are for
the same word, NEWPORT. All the marks are depicted in
typed form and, therefore, the marks are identical except
for applicant’s addition of the disclaimed term RAINGEAR.
Inasmuch as applicant’s goods are identified as “raingear,
namely rain-resistant ponchos,” the term raingear is highly
descriptive, if not, generic for applicant’s goods.4 In a
similar case, the Federal Circuit has held that the
addition of the word “Swing” to registrant’s mark “Laser”
did not result in the marks being dissimilar. “[B]ecause
both marks begin with ‘laser,’ they have consequent
similarities in appearance and pronunciation. Second, the
term ‘swing’ is both common and descriptive… Regarding
descriptive terms this court has noted that the descriptive
component of a mark may be given little weight in reaching
a conclusion on likelihood of confusion.” Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845-45
(Fed. Cir. 2000) (citations and quotation marks omitted).
4 Applicant admits that the term “raingear” is at least
descriptive of its goods. Applicant’s Brief at 7.
Ser No. 76334833
4
See also In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997) (Court held that the addition
of “The,” “Cafe” and a diamond-shaped design to
registrant’s DELTA mark still resulted in a likelihood of
confusion); Wella Corp. v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA
CONCEPT and surfer design likely to be confused with
CONCEPT for hair care products).
Applicant’s principal argument is that the term
“Newport” is a very weak mark. As evidence of this alleged
weakness, applicant has introduced numerous registrations
including the term “Newport.” 5 Our principal reviewing
court has explained that: “Much of the undisputed record
evidence relates to third party registrations, which
5 Applicant points out that the Office has registered the marks
NEWPORT OF CALIFORNIA and design (No. 1,155,674, issued May 26,
1981, cancelled), NEWPORT BEACH (No. 1,340,873, issued June 11,
1985, cancelled), CLUB NEWPORT (No. 1,355,488, issued August 20,
1985, cancelled), NEWPORT BLUE (stylized) (No. 1,452,234, issued
August 11, 1987, cancelled), NEWPORT BEACH ATHLETIC CLUB (No.
1,476,925, issued February 16, 1988, “Newport Beach” disclaimed,
cancelled), NEWPORT SURF & SPORT (No. 1,579,112, issued January
23, 1990, Section 2(f), cancelled), NEWPORT BAY (No. 1,727,728,
issued October 27, 1992, active), NEWPORT NEWS (No. 1,892,686,
issued May 2, 1995, active), NEWPORT POLO (No. 1,973,866, issued
May 14, 1996,(“Newport” disclaimed, cancelled), NEWPORT CASINO
(No. 1,997,249, issued August 27, 1996, active), SALTY PAWS
NEWPORT (No. 2,011,490, issued October 29, 1996, “Newport
disclaimed, active), NEWPORT REGATTA (No. 2,189,971, issued
October 21, 1997, active), and NEWPORT AQUARIUM (No. 2,583,237,
issued June 18, 2002, active) for various types of shirts.
Applicant also notes a similar pattern regarding the Class 18
goods.
Ser No. 76334833
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admittedly are given little weight but which nevertheless
are relevant when evaluating likelihood of confusion. As
to strength of a mark, however, registration evidence may
not be given any weight.” Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992)
(emphasis in original). See also AMF Inc. v. American
Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973) ("The existence of [third party] registrations
is not evidence of what happens in the market place or that
customers are familiar with them"). While “third-party
registrations may be used to demonstrate that a portion of
a mark is suggestive or descriptive, they cannot be used to
justify the registration of another confusingly similar
mark.” In re J.M. Originals Inc., 6 USPQ2d 1393, 1394
(TTAB 1987).
We start by noting, as applicant has also pointed out,
that many of these registrations have been cancelled. “[A]
canceled registration does not provide constructive notice
of anything.” Action Temporary Services Inc. v. Labor
Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir.
1989). The fact that various marks containing the term
“Newport” with other non-generic terms have co-existed in
the past does not support the registration of applicant’s
mark today. Inasmuch as our precedent is clear and
Ser No. 76334833
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applicant has not introduced evidence of use of the term
“Newport” by others,6 we cannot accept applicant’s arguments
that the mark in the cited registrations is weak.
Moreover, these third-party registrations do not show that
the term “Newport” is descriptive or suggestive of any
feature or characteristics of applicant’s raingear or
umbrellas.7
In this case, where the marks are NEWPORT and NEWPORT
RAINGEAR, the addition of the descriptive/generic term
RAINGEAR does not significantly change the commercial
impression of the marks. Like the registered marks, we
find that the dominant part of applicant’s mark would also
be NEWPORT. The additional word “raingear” would simply
indicate the goods on which the mark is used. We also note
that if “the dominant portion of both marks is the same,
then confusion may be likely notwithstanding peripheral
differences.” In re Denisi, 225 USPQ 624, 624 (TTAB 1985).
6 Applicant’s reliance on In re Broadway Chicken Inc., 38 USPQ2d
1559 (TTAB 1996), is misplaced because, unlike the applicant in
that case, applicant here has not introduced any evidence of
third-party use.
7 Applicant points out that the term “Newport” is a
“geographically descriptive term.” Reply Brief at 4. We take
judicial notice of the fact that Newport is the name of cities in
Wales, Rhode Island, the Isle of Wight, and Kentucky and that
there is a city named Newport Beach in California and Newport
News in Virginia. The Random House Dictionary of the English
Language (Unabridged), 2d ed. (1987). The mere fact that Newport
is the name of several geographic locations does not, without
more, indicate that it is a weak mark.
Ser No. 76334833
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Here, the only difference between the marks is the presence
of the word “Raingear” in applicant’s mark. While we
certainly have not disregarded this term in our analysis,
we conclude that the marks in their entireties look and
sound similar and the addition of “raingear” does not alter
the meaning of the mark. Therefore, the marks are similar.
The next, often critical, factor we consider is
whether the goods of the applicant and registrants are
related. We must consider these goods as they are
identified in the application and registrations. Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”). “In order
to find that there is a likelihood of confusion, it is not
necessary that the goods or services on or in connection
with which the marks are used be identical or even
competitive. It is enough if there is a relationship
between them such that persons encountering them under
their respective marks are likely to assume that they
originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re
Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).
Ser No. 76334833
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Since there are two registrations cited against
applicant’s goods, we must determine whether applicant’s
umbrellas are related to the first registration’s
suitcases, valises, and travelling bags. The next question
is whether applicant’s rain-resistant ponchos are related
to the second registration’s outer shirts. The examining
attorney relies on two types of evidence to demonstrate the
relatedness of the goods. First, the examining attorney
has introduced numerous registrations that suggest that the
same source may provide umbrellas and luggage and other
registrations to show the same for outer shirts and
ponchos. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988) (Although third-party registrations
“are not evidence that the marks shown therein are in use
on a commercial scale or that the public is familiar with
them, [they] may have some probative value to the extent
that they may serve to suggest that such goods or services
are the type which may emanate from a single source”). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786
(TTAB 1993). See, e.g., Registration Nos. 2,649,478
(luggage and umbrellas); 2,644,628 (travel bags and
umbrellas); 2,631,795 (luggage and umbrellas); 2,563,901
(luggage, suitcases, and umbrellas); 2,527,652 (luggage and
umbrellas); 2,496,418 (luggage and umbrellas); 2,720,668
Ser No. 76334833
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(umbrellas and suitcases); and 2,721,844 (luggage and
umbrellas). See also Registration Nos. 2,589,978 (ponchos
and shirts); 2,610,703 (ponchos and shirts); 2,626,726
(ponchos and shirts); 2,584,568 (rainwear and shirts);
2,713,687 (rainwear, t-shirts, and sweatshirts); 2,699,100
(rainwear and shirts); 2,331,892 (rainwear and shirts);
2,453,944 (rainwear and shirts); 2,228,177 (rainwear and
shirts); and 2,097,791 (rainwear and shirts). These
registrations suggest that luggage and umbrellas are
marketed by the same entity under the same mark and that
rainwear, which would include rain-resistant ponchos, and
shirts are similarly marketed.
Second, there is other evidence that supports the
conclusion that these goods are related. For example, The
American Tourister website shows umbrellas and luggage sold
under the same mark. The Travelsmith website, in its
luggage and accessories page, shows luggage and umbrellas.
The K-12 Outfitters site shows sweatshirts and rain-
resistant ponchos marketed together. The evidence suggests
that potential customers are likely to believe that
applicant’s umbrellas and registrant’s luggage as well as
applicant’s raingear, namely ponchos and registrant’s outer
shirts are associated with the same source. Potential
purchasers already familiar with the mark NEWPORT for outer
Ser No. 76334833
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shirts would likely believe that applicant’s raingear, sold
under the mark NEWPORT RAINGEAR, originate from, or are
associated with, the same source. Similarly, potential
customers would likely believe that umbrellas sold under
the mark NEWPORT RAINGEAR emanate from or are associated
with the same source as the NEWPORT luggage. In addition,
the evidence also shows overlap in the channels of trade
for umbrellas and luggage, as well as the channels of trade
for ponchos and shirts.
One final point we address is applicant’s argument
that the examining attorney “has incorrectly applied the
standard for refusing registration under Section 2(d).”
Reply Brief at 2. In effect, applicant asserts that the
examining attorney applied a “possibility” of confusion
rather that a likelihood of confusion standard. We
reiterate that our affirmance of the examining attorney’s
refusal is based on our conclusion that, under the
applicable Majestic Distilling/du Pont factors, there is a
likelihood of confusion. Second, we note that the
examining attorney has, in fact, reached the same
conclusion. See Examining Attorney’s Brief at 7 (“Because
the applicant’s mark and the registrants’ marks are similar
in appearance and commercial impression, and it has been
shown that applicant’s and registrants’ goods are related,
Ser No. 76334833
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consumers are likely to be confused if applicant’s mark
were to be registered”) (emphasis added). The examining
attorney’s discussion of the “real possibility that
purchasers … may perceive…” does not detract from his
conclusion that consumers “are likely to be confused.”
Ultimately, when we view the evidence of record in
relationship to the relevant factors, we conclude that
confusion would be likely were applicant to use its mark on
umbrellas and ponchos in view of the two cited
registrations. While we admit that our determination is
not free from doubt, we must resolve those doubts in favor
of the registrants and against the newcomer. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026
(Fed. Cir. 1988); In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729, 729-30 (CCPA 1973).
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.