Gino Corp.

Trademark Trial and Appeal Board

Mar 25, 2014

No. 85717658 (T.T.A.B. Mar. 25, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 25, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Gino Corp.
_____

Serial No. 85717658
_____

Matthew H. Swyers of The Trademark Company,
for Gino Corp.
Nicholas Altree, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Bucher, Ritchie and Lykos,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Gino Corp. (“applicant”) seeks registration on the Principal Register of the mark
American Trend (in standard character format) for
men’s and boys’ 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,
Serial No. 85717658
- 2 -
coats, shoes, socks, and underwear in International Class
25.1
The examining attorney has refused registration of 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 so resembles the registered mark, TRENDS USA, for “clothing;
namely, shirts, slacks, dresses, shorts, tops, T-shirts, skirts and blouses” also in
International Class 25,2 that when used on or in connection with applicant’s
identified goods, it is likely to cause confusion, to cause mistake or to deceive.
After the examining attorney made the refusal final, applicant appealed to this
Board. We affirm the refusal to register.
Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record 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 goods or 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

1 Application Serial No. 85717658 was filed on August 30, 2012, based upon applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
2 Registration No. 1834701 issued on May 3, 1994; renewed. No claim is made to the
exclusive right to use the designation “USA” apart from the mark as shown.
Serial No. 85717658
- 3 -
goods and differences in the marks”). We discuss each of the du Pont factors as to
which applicant or the examining attorney submitted argument or evidence.
A. The Goods
The application identifies “men’s and boys’ 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,” while the cited registration
identifies “clothing; namely, shirts, slacks, dresses, shorts, tops, T-shirts, skirts and
blouses,” also in International Class 25. Items of overlap include applicant’s “shirts,
T-shirts, pants/slacks, dresses, shorts, skirts and blouses.”
Accordingly, many of these respective goods are deemed to be legally identically.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981) (likelihood of confusion may be found based on any item that
comes within the identification of goods or recitation of services in that class). Those
that are not identical are closely related for purposes of our § 2(d) analysis. Hence,
we find that this du Pont factor strongly favors a finding of likelihood of confusion.
B. The Channels of Trade
Under the third du Pont factor, we consider evidence pertaining to the similarity
or dissimilarity of the trade channels for applicant’s goods and the goods in the cited
registration.
Serial No. 85717658
- 4 -
In this context, applicant has submitted a signed affidavit and website printouts
attempting to limit the scope of registrant’s goods, its classes of purchasers and
channels of trade. However, the question of likelihood of confusion in an ex parte
appeal must be determined based upon the description of the goods stated in the
application and registration at issue, not on extrinsic evidence of actual use. See
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1722 (Fed. Cir. 2012); Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352,
56 USPQ2d 1351 (Fed. Cir. 2000); Octocom Sys. Inc. v. Hous. Computers Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The presumption under
Trademark Act § 7(b), 15 U.S.C. § 1057(b), is that registrant is the owner of the
mark and that use of the mark extends to all goods identified in the registration. In
this case, neither the application nor the registration contains any limitations as to
trade channels for the clothing goods at issue. Hence, the statutory presumption
implies that registrant operates in all normal channels of trade for such items (e.g.,
clothing and department stores) and reaches all classes of purchasers of the
identified goods. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23
USPQ2d 1945 (Fed. Cir. 1992) (applicant’s for “golf shirts having collars”
likely to cause confusion with opposer’s for athletic shoes, sweatsuits, and
athletic shirts); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752 (TTAB 2009)
(applicant’s PALOMITA for shirts, pants, shoes and hats likely to cause confusion
with opposer’s PALOMA for belts, shirts, blouses, pants, dresses, skirts, shorts,
jackets, coats, undergarments, footwear, hosiery and headwear); and In re Melville
Corp., 18 USPQ2d 1386, 1389 (TTAB 1991) (applicant’s for women’s shoes
Serial No. 85717658
- 5 -
likely to cause confusion with ESSENTIALS for women’s pants, blouses, shorts, and
jackets).
Accordingly, we find that the du Pont factor focusing on the similarity of the
trade channels also weighs in favor of a finding of likelihood of confusion.
C. Sophistication of Purchasers
Applicant claims that its clothing items are targeted to wholesalers and
retailers. However, as noted above, there are no such limitations in applicant’s
identification of goods. Rather than focusing on a sophisticated class of purchasers,
we must presume the ultimate purchasers of both applicant’s items of clothing and
registrant’s legally-identical items of clothing will be ordinary classes of purchasers.
Additionally, given the price points applicant references in this record, we cannot
assume that its customers will be exercising a heightened level of care. At best for
applicant, this is a neutral factor in our weighing of the du Pont factors.
D. The Marks
Preliminarily, we note that when the goods of an applicant and registrant are
legally identical, as is the case here, the degree of similarity between the marks
required to support a finding of likelihood of confusion is not as great as in the case
of diverse goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (citing Century 21 Real Estate Corp. v. Century Life of
Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)); and In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010).
Serial No. 85
We c
impress
Ponsard
Cir. 200
In co
side com
similar
the mar
Servs., I
Mfg. Co
1977) (
MONOC
Inc., 23
June 5,
GRILL
proper f
rather t
Winston
likely
carriers
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onsider an
ion of the
in Maison
5).
mparing t
parison
in terms o
ks would
nc. v. Triu
. v. JFD E
applicant’
ERAM, bo
USPQ2d 1
1992) (a
likely to c
ocus is on
han specif
, Inc., 207
to cause
for v
and cover
d compar
marks in t
Fondee E
he marks,
of the ma
f their com
be likely
mph Lear
lectronics
s MICRO
th for elec
735, 1741
pplicant’s
ause confu
the recoll
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USPQ 335
confusion
ehicles eq
s, etc.).
e the app
heir entire
n 1772, 3
we are mi
rks, but i
mercial i
to assum
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Componen
CERAM
trical cap
(TTAB 19
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sion with
ection of t
on of the m
, 344 (TTA
with o
uipped wi
- 6 -
earance, s
ties. Palm
96 F.3d 1
ndful that
nstead ‘wh
mpression
e a connec
101 USPQ
ts Corp., 5
likely to
acitors); Sp
91), aff'd u
POON CA
opposer’s
he averag
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B 1980) (
pposer’s
th pneuma
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Bay Impo
369, 73 U
“[t]he pro
ether the
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tion betw
2d at 172
65 F.2d 68
cause co
oons Rest
npublishe
FE and S
SPOONS
e custome
nebago In
applicant’s
tic tires,
otation a
rts Inc. v.
SPQ2d 16
per test is
marks a
t persons
een the p
1; San Fer
3, 196 US
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aurants In
d, No. 92-
ILVER SP
and
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for
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nd comme
Veuve Clic
89, 1692 (
not a side
re sufficie
who encou
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nando Ele
PQ 1, 3 (C
ith oppo
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1086 (Fed.
OON BA
).
ains a gen
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vehicle
ts such as
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ntly
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oach
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CPA
ser’s
ison
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R &
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eral
er &
tires
and
tire
Serial No. 85717658
- 7 -
The mark in the cited registration is TRENDS USA. Registrant has disclaimed
the geographically descriptive designation “USA.” The mark in the application is
American Trend. While we must not improperly dissect a mark, certain features
may be considered dominant. In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985) (“[T]here is nothing improper in 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 consideration of the marks in their
entireties.”). In particular, descriptive or disclaimed matter (e.g., applicant’s “USA”)
is generally considered a less dominant portion of a mark. Id.
In comparing TRENDS USA with American Trend, there are obvious
dissimilarities as to appearance and sound. Additionally, as to connotation,
applicant argues that the cited mark focuses on trends that are unique to the
United States, while its mark focuses more on the two American continents. As a
result, applicant argues that registrant’s cited mark creates an overall commercial
impression of patriotism or nationalism for the United States, while its mark simply
evokes two large continents.
By contrast, the examining attorney argues from dictionary entries that the
terms “USA” and “American” have clear overlapping definitions, and within this
country, at least, they are often used interchangeably as references to “the United
States of America.” Despite a difference in word order in the respective marks, the
examining attorney points out that both “USA” and “American” both modify the
word “Trend(s).”
Serial No. 85
Also
the spec
This
associat
City Ba
Accordin
could di
specime
somethi
created
drawing
hypothe
Acco
and ove
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similar
provided
717658
, the exam
imens of r
cited ma
ed with it
nk Group
gly, the e
splay its st
n, choosin
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from read
program
tical speci
rdingly, w
rall comme
. Number
urn next t
marks ad
for the
ining atto
ecord supp
rk is reg
are not lim
Inc., 637
xamining a
andard ch
g as reaso
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ily-availab
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men at rig
e find that
rcial impr
and natu
o the sixth
opted to
record cop
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orting the
istered in
ited to an
F.3d 1344
ttorney co
aracter for
nable lett
dard font
le compute
hown in
ht.
these resp
essions.
re of sim
du Pont
be used o
ies of nea
- 8 -
s to the pr
Section 8
standard
y particula
, 98 USP
ntends th
mat mark
ering
s we
rized
the
ective ma
ilar mark
factor focu
n related
rly twenty
esentation
affidavit, a

characte
r display.
Q2d 1253
at we mus
, American
rks will cre
s adopte
sing on th
goods. In
third-par
of registr
s shown b
r form, a
Citigroup
, 1256 (Fe
t presume
Trend, on
ate simila
d for simi
e number
this reg
ty marks
ant’s mar
elow:
nd the ri
Inc. v. Cap
d. Cir. 20
that appli
its own
r connotat
lar goods
and natu
ard, appli
registered
k on
ghts
ital
11).
cant
ions

re of
cant
for
Serial No. 85717658
- 9 -
clothing and related services, which marks incorporate some variation on
“American/USA” or “Trend(s)”:
GLOBAL TRENDS TRENDS TRENDS
The Trend Boutique FASHIONUSA
URBAN
TRENDS
ISLAND
TRENDS
AMERICAN
APPAREL
LIQUID FUSION
AMERICAN
CLOTHING
Trendy Trends American Passion
American Mint Clothing Company
BEST
AMERICAN
CLOTHING
COMPANY
Based upon this listing, applicant argues that the cited mark is weak and this factor
favors the position taken by applicant that there is no likelihood of confusion herein.
We disagree.
Applicant’s submissions have substantially no probative value on this point
inasmuch as live registrations are not evidence of actual use, and we cannot assume
that the public has been exposed to those marks. See Smith Bros. Mfg. Co. v. Stone
Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is
not aware of registrations reposing in the United States Patent and Trademark
Office). See also In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
Serial No. 85717658
- 10 -
Furthermore, even assuming all the involved goods are the same, a quick review of
these marks – some having distinctive design features and many with the addition
of strong, arbitrary literal elements – reveals totally different connotations and
overall commercial impressions from applicant’s and registrant’s much more similar
marks. In view thereof, we do not agree with applicant’s argument that consumers
have become so conditioned by their exposure to a plethora of “American/USA” and
“Trend(s)” marks that they are able to distinguish these involved marks based
largely upon the difference between the modifiers “USA” and “American” as applied
to legally-identical items of clothing.
F. Conclusion
In weighing the relevant du Pont factors, we find that the marks are quite
similar as to connotations and overall commercial impressions, the respective goods
are legally identical, and we presume that these goods will move through
overlapping channels of trade to the same classes of purchasers.
Finally, we note applicant mentions several times that registrant’s listed
clothing items do not appear currently to be available for purchase. However, the
presumptions of § 7 of the Trademark Act make such a charge about registrant’s
usage irrelevant to our likelihood of confusion determination in an ex parte appeal.
Absent a petition to cancel the cited registration based upon abandonment, for
example, applicant will not be heard herein with what amounts to a collateral
attack on the cited registration.
Serial No. 85717658
- 11 -
Decision: The refusal to register applicant’s mark American Trend under
Section 2(d) of the Lanham Act is hereby affirmed.