Global Brand Holdings, LLC

Trademark Trial and Appeal Board

Aug 30, 2007

No. 78516081 (T.T.A.B. Aug. 30, 2007)

Mailed:
August 30, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Global Brand Holdings, LLC
________

Serial No. 78516081
_______

Alisa Cahan and Louis S. Ederer of Arnold & Porter LLP for
Global Brand Holdings, LLC.

David C. I, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Bucher, Holtzman and Kuhlke, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Global Brand Holdings, LLC seeks registration on the
Principal Register of the mark XOXO for goods identified
in the application, as amended and divided, as follows:
“paper goods, namely envelopes, calendars,
gift wrapping paper, postcards, writing
pads, greeting cards and stationery” in
International Class 16.1

1 Application Serial No. 78516081 was filed on November 12,
2004 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. Additional goods in International
Classes 11, 16, 24 and 27 contained in the application as
originally filed have been divided out and placed into
Application Serial No. 78977526.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78516081
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This case is now before the board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has found that applicant’s mark, when used in
connection with the identified goods, so resembles the mark
JERRI XOXO2 for:
“bridal stationery and printed matter
appropriate to bridal showers, the giving of
gifts and preparation of weddings, in the
nature of post cards, blank forms, thank you
cards, invitations, greeting cards,
announcement cards, gift cards, address
books, address labels, agendas, anniversary
books, appointment books, albums, blank note
cards, memo pad, note paper, note pads,
occasion cards, paper labels, printed
invitations, scrapbook albums, scrapbook
pages, stationary [sic], stationary [sic]
writing paper and envelopes, wedding albums,
wedding books, writing pads, writing paper,
writing tablets, daily planners, date books,
desk pads, desk top planners, diaries,
portraits, engagement books, envelopes,
stationery and printed poems” also in
International Class 16,3

2 While the database of the United States Patent and
Trademark Office indicates that this is a typed
drawing, applicant has correctly shown that
registrant’s drawing page contained a drawing
that did not follow the rule of a typed
drawing. However, irrespective of how
registrant intended to present the drawing of its mark, this
difference is in no way critical to our determination herein.

3 Registration No. 2921955 issued to Jerri & Company on
February 1, 2005 based upon an application filed on September 5,
2002 claiming first use anywhere and first use in commerce at
least as early as May 31, 2001.
Serial No. 78516081
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as to be likely to cause confusion, to cause mistake or to
deceive.
The Trademark Examining Attorney and applicant have
fully briefed the case. We affirm the refusal to register.
In arguing for registrability, applicant contends that
applicant’s mark and the registered mark create different
overall commercial impressions; that applicant’s goods are
different from registrant’s goods; and that the respective
goods will flow through different channels of trade.
By contrast, the Trademark Examining Attorney contends
that the marks create the same commercial impression; that
some of the goods are identical and the balance of the
goods are related; and that the goods of applicant and of
registrant have no limitations and could well move through
the same channels of trade.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood
of confusion is based upon our analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973). See also In re Majestic
Serial No. 78516081
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Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key, although not exclusive, considerations
are the similarities between the marks and the relationship
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The goods

Applicant has argued throughout the prosecution of
this application that while the International Class 16
products covered by these two marks may fall into the same
general field, they are clearly different “product
segments.” Specifically, applicant points out that
registrant has limited its goods to bridal and wedding
printed materials whereas applicant is seeking protection
for its mark in connection with general paper goods,
calendars and the like – goods that, according to
applicant, are not in any way related to the bridal
industry.
However, while registrant has limited its paper goods
and printed materials to bridal stationery, paper products
related to bridal showers, weddings and gift giving,
Serial No. 78516081
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applicant has placed no restrictions on the field of use
for its paper goods. As noted by the Trademark Examining
Attorney, likelihood of confusion is determined on the
basis of the goods as they are identified in the
application and in the registration. Hewlett-Packard Co.
v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir.
1991); and Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990). Inasmuch as applicant’s identification of goods is
unlimited, it is presumed that the application encompasses
all goods of the type described, including those enumerated
in the registrant’s more specific identification, that they
move in all normal channels of trade and that they are
available to all potential customers. TMEP
§ 1207.01(a)(iii). Accordingly, we presume that some of
applicant’s goods are legally identical to those of
registrant, and the remaining items are related.
In support of its position that there is no likelihood
of confusion, applicant also argues that this “application
extends Applicant’s XOXO mark into the paper goods
Serial No. 78516081
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category, which is part of the natural expansion of the
XOXO brand” (Applicant’s reply brief, p. 4) from clothing,
luggage, eyeglasses, jewelry, bedding and bath accessories.
However, the concept of “expansion of trade” is generally
addressed in the context of the issue of priority in an
inter partes proceeding. This doctrine has a more limited
application in an ex parte proceeding. That is, we look
herein at the question of the relatedness of the goods (or
services) identified in applicant’s application and those
in the cited registration based upon whether or not
consumers are likely to believe that the goods (or
services) emanate from a single source, rather than whether
or not one merchant or manufacturer has expanded, or is
likely to expand, its particular goods (or services) to
include those of another. See In re 1st USA Realty
Professionals, Inc., ____USPQ2d_____ , Serial No. 78553715
(TTAB August 7, 2007).
Hence, we find that this du Pont factor favors a
finding of likelihood of confusion.
Channels of trade and standards of care

Applicant argues that according to registrant’s
website, www.bridalshowergames.net, JERRI XOXO bridal
products are targeted directly to brides and the women who
Serial No. 78516081
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host bridal showers. By contrast, applicant argues that
its current lines of XOXO brand products (e.g., clothing,
luggage, eyeglasses, jewelry, bedding, bath accessories,
etc.) are sold to young fashion-conscious consumers through
upscale retail outlets and department stores such as
Bloomingdale’s, Macy’s and Nordstrom’s, and that its line
of paper products would be sold to these same consumers as
well.
As much as applicant would have us pay heed to “the
practicalities of the commercial world,” we cannot resort
to extrinsic evidence, such as registrant’s website, in
order to restrict registrant’s customers or channels of
distribution to registrant’s using the Internet to target
brides-to-be and the women who host bridal showers.
Furthermore, there are no express limitations as to the
types of retail outlets or trade channels where applicant’s
goods will be sold. Hence, we must presume that these
legally-identical goods will move in all normal channels of
trade, including stationery stores, and that they will both
be available to all classes of potential customers,
including ordinary consumers. We assume these products are
not expensive, and the ordinary consumers making these
purchases will not exercise a high degree of care in
Serial No. 78516081
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selecting these products. Accordingly, these related
du Pont factors also support the position of the Trademark
Examining Attorney herein.
The marks

Applicant argues that the single term XOXO is its
house mark, while the dominant portion of registrant’s
JERRI XOXO mark is the name JERRI – the first word in the
mark and registrant’s trade name derived from the first
name of a principal of registrant’s business.
We find that as to connotation and commercial
impression, the marks are similar inasmuch as the XOXO
portion of registrant’s mark is quite distinctive. While
applicant’s mark has some obvious differences from
registrant’s mark as to appearance and sound, the
distinctive term XOXO is also a significant point of
similarity between the marks in terms of sound and
appearance. Furthermore, the term JERRI does not provide a
distinguishing feature so much as it suggests a variant
product line of the XOXO brand. To the extent that
applicant is the junior user of its mark on International
Class 16 goods, but may have a much larger retail presence
than registrant, this may indeed be viewed as an example of
potential “reverse confusion,” as argued by the Trademark
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Examining Attorney. That is a relevant factor in this case
inasmuch as the involved goods are legally identical, and
hence must be considered competitive, and we must also
presume that the respective markets are overlapping, and
are directed to the same classes of ordinary purchasers.
See 3 J.T. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
(4th Ed.) § 23:10. Accordingly, this du Pont factor
supports a finding of likelihood of confusion.
Finally, applicant argues that during the prosecution
of registrant’s application, registrant argued that
confusion did not exist between its mark and an XOXO mark
for paper goods in an earlier-filed application owned by a
third party. Nonetheless, we agree with the Trademark
Examining Attorney that registrant’s earlier arguments on
this point are of little probative value in establishing
the likelihood of confusion herein. Registrant’s having
taken this position is “merely illuminative of shade and
tone in the total picture” herein. See Interstate Brands
Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ
151 (CCPA 1978). Moreover, the involved registration
issued only after the cited application had abandoned. And
even if it had registered over a potentially blocking
registration, we would not be bound by that action.
Serial No. 78516081
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Although consistency in examination is a goal of the
Office, the decisions of previous Trademark Examining
Attorneys are not binding on us, and we must decide each
case based on the evidence presented in the record before
us. In re Nett Designs Inc., 57 USPQ2d 164 (Fed. Cir.
2001).
Conclusion:
In summary, we find that some of applicant’s goods are
legally identical to those of registrant, and the balance
are related; that the respective goods will move in all
normal channels of trade and that they will both be
available to the same classes of ordinary consumers; and
that the marks are similar as to sound, appearance,
connotation and commercial impression.
Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby affirmed.