Hanks Clothing

Trademark Trial and Appeal Board

Apr 22, 2013

No. 85250252 (T.T.A.B. Apr. 22, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hanks Clothing
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Serial No. 85250252
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Mark Levy of Hinman, Howard & Kattell, LLP for Hanks Clothing.

Jeri Fickes, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney).
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Before Cataldo, Ritchie, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Hanks Clothing filed an application to register the mark HANKS
CLOTHING in standard character form on the Principal Register for “retail sale of
apparel, footwear, and accessories.”1 The trademark examining attorney refused
registration under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark, as used in connection with applicant’s services, so resembles
the registered mark HANK as to be likely to cause confusion, or to cause mistake, or

1 Application Serial No. 85250252, filed under Trademark Act § 1(a), 15 U.S.C. §1051(a), on
February 24, 2011, with a claim of first use and first use in commerce of January 1, 1966.
CLOTHING is disclaimed a part from the mark as shown.
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to deceive. The cited mark is registered on the Principal Register in standard
character form for “clothing, namely, shirts, sweatshirts, pants, shorts, jackets,
sweatpants and hats.”2 The examining attorney also required that applicant amend
its recitation services to conform with Trademark Office standards. When the
refusal and the requirement were made final, applicant appealed. Applicant and
the examining attorney have filed briefs.
1. Refusal under Section 2(d).
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors 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). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, the applicant and
the examining attorney have also submitted evidence and arguments regarding the
nature of applicant’s services, channels of trade, classes of customers, the degree of
care taken by customers, and absence of actual confusion.
We address first the respective services and goods of applicant and
registrant, to determine whether they are sufficiently related to give rise to
potential confusion.

2 Reg. No. 2927530, issued on February 22, 2005; Section 8 declaration accepted.
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Applicant points out that it provides a service, while registrant offers goods.3
This distinction alone is not sufficient to render confusion unlikely. It has often
been recognized that likelihood of confusion may arise where confusingly similar
marks are used on goods, on the one hand, and in connection with sales of such
goods, on the other. See In re Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d
1629, 1640 (TTAB 2006); J. Thomas McCarthy, Trademarks and Unfair
Competition (4th ed.) § 24:25. As our principal reviewing court has noted,
“trademarks for goods find their principal use in connection with selling the goods”
and accordingly marks for goods and marks for the service of selling such goods will
have their impact on the purchasing public in the same marketplace. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). The Board has
often found a likelihood of confusion between marks that were used on apparel, on
the one hand, and stores featuring apparel on the other. In re The United States
Shoe Corporation, 229 USPQ 707 (TTAB 1985) (clothing store services versus
uniforms); In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992) (coats versus retail
outlets featuring camping equipment); In re U.S. Shoe Corp., 8 USPQ2d 1938
(TTAB 1988) (cowboy boots versus retail clothing stores featuring boots).
The examining attorney has submitted four use-based, third-party
registrations,4 each of which relates to both apparel and retail stores featuring
apparel. U.S. Reg. Nos. 3946072; 3943360; 3939197; and 3937944. Such third-
party registrations that are based on use in commerce may have some probative

3 Applicant’s brief at 3.
4 Office action of May 31, 2011.
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value to the extent that they serve to suggest that the listed goods and services may
emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988).
Applicant argues that it “sells fine and formal apparel at high-end prices”
and “does not sell sportswear such as Registrant’s sweatshirts, sweatpants, or
shorts.”5 However, the scope of the registration applicant seeks is defined by its
application (and not by its actual use). The application is not limited to sale of
“high-end” apparel, footwear, and accessories, so we must assume that it
encompasses sale of all types of such goods, including sweatshirts, shorts and
sweatpants as identified in the registration, whether costly or not.
The authority is legion that the question of registrability
of an applicant's mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant's goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.

Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). Similarly, we must presume that the registrant’s goods
encompass all goods of the nature and type identified in the registration, whether
costly or inexpensive. In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006).
Certainly registrant’s “shirts, … pants,… jackets, … and hats,” at the very least, are
types of goods that may be offered at all price points, including high-end prices.

5 Applicant’s brief at 3.
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Overall, we find that it is extremely plausible that a retail clothing store may
undertake to offer clothing under its own store brand, that customers of such stores
would not be surprised to find clothing offered under the store’s brand and would
readily perceive clothing so marked as originating with the store that bears the
same mark. Accordingly, the factor of the similarity or dissimilarity of applicant’s
services and registrant’s goods favors a finding of likelihood of confusion.
Applicant briefly argues that as its services are different in nature from
registrant’s goods, they do not travel through the same channels of trade.6
However, it is apparent that applicant’s service is a channel of trade for goods of the
type identified in the registration. As the Hyper Shoppes court noted, applicant’s
services and registrant’s goods will have their impact “in the same marketplace.” 6
USPQ2d at 1026. Accordingly, the factor of trade channels favors a finding of
likelihood of confusion.
Applicant argues that its customers are “sophisticated purchasers,
accustomed to exercise care in purchasing the goods sold by [applicant].”7 The
suggestion that the customers of clothing stores are particularly sophisticated and
careful is counterintuitive and is unsupported by any evidence of record.
Accordingly, this du Pont factor is neutral.
We turn next to the similarity or dissimilarity of the marks as to appearance,
sound, connotation and commercial impression. Du Pont, 177 USPQ at 567.
Applicant’s mark is HANKS CLOTHING and the registered mark is HANK.

6 Id.
7 Applicant’s brief at 3-4.
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Applicant is correct in urging us to consider the marks in their entireties in
reaching our ultimate conclusion, but there is nothing improper in giving more or
less weight to a particular feature of a mark for rational reasons. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The dominant
portion of applicant’s mark is clearly HANKS, because the remainder of the wording
is the generic name of the goods that are offered through applicant’s retail services
and has no inherent source-indicating power.
Applicant’s entire mark HANKS CLOTHING is not identical to the
registrant’s mark HANK, and applicant cites Mr. Hero Sandwich Systems, Inc. v.
Roman Meal Company, 781 F.2d 884, 228 USPQ 364 (Fed. Cir. 1986) as a precedent
for finding these two marks dissimilar. That case is distinguishable. In Mr. Hero
the Court found ROMANBURGER, for sandwiches sold through fast food
restaurants for immediate consumption, not confusingly similar to ROMAN (and
design) for foods (primarily cereal-based, including bread, rolls and buns) sold to
institutions and through grocery stores. The Court found that the trade channels
and the nature of the goods were substantially different. 228 USPQ at 367. It also
found that ROMANBURGER was unitary (“not ‘Roman’ plus another word”), would
be “pronounced as one word, with sound and cadence distinctly different from the
Roman Meal marks,” and was “suggestive of a variety of sandwich appropriately
used in a carry-out food store,” resulting in a commercial impression different from
that of the mark ROMAN. Id. at 366. In the case before us, the distinction between
trade channels is lacking, and there is a close relationship between applicant’s
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services and registrant’s goods. Moreover, applicant’s mark does not have the
unitary quality noted in Mr. Hero; rather, it actually is simply HANKS “plus
another word.” The additional matter in applicant’s mark is CLOTHING, which is
the generic name for the goods offered through applicant’s retail services and the
generic name of registrant’s goods. It would be neither improper nor unexpected for
registrant, a clothing merchant, to use its mark in close conjunction with the word
CLOTHING. Accordingly, the word CLOTHING does not give applicant’s mark a
significance or commercial impression that differs from the significance and
commercial impression of the registrant’s mark HANK as applied to clothing.
As between HANKS and HANK, we see little viable distinction. As the
examining attorney has pointed out, if applicant’s mark is perceived to be a plural
form of HANK, the distinction is not sufficient to prevent likely confusion. Wilson v.
Delaunay, 114 USPQ 339, 341 (CCPA 1957); In re Pix of America, Inc., 225 USPQ
691, 692 (TTAB 1985); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962). If the
mark is perceived as a possessive form of HANK, that too is not a source-identifying
distinction. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009); In re Curtice-Burns,
Inc., 231 USPQ 990, 992 (TTAB 1986); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203 USPQ
140, 143 (TTAB 1979). In all important respects, we find the applicant’s mark
highly similar in appearance, sound, significance and overall commercial
impression. Accordingly, this du Pont factor favors a finding of likelihood of
confusion.
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Finally, applicant argues that it “has been selling apparel since January 1,
1966, during which time no actual confusion regarding Registrant’s goods has
occurred.”8 In an ex parte context, where we have no input from the registrant,
applicant’s uncorroborated statement of no known instances of actual confusion are
of little evidentiary value. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Bisset-Berman Corp., 476 F.2d 640, 177
USPQ 528, 529 (CCPA 1973). In any event, the record is devoid of probative
evidence relating to the extent of use of applicant’s and registrant’s marks and,
thus, whether there have been meaningful opportunities for instances of actual
confusion to have occurred in the marketplace. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Accordingly, the du Pont
factor of the length of time during and conditions under which there has been
contemporaneous use without evidence of actual confusion is neutral.
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s mark, as
applied to applicant’s services, so closely resembles the cited registered mark as to
be likely to cause confusion, mistake or deception as to the source of applicant’s
services.

8 Applicant’s brief at 4.
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2. Requirement of a more definite identification of services.
As a separate ground of refusal, the examining attorney has refused
registration on the ground that applicant has failed to amend its recitation of
services, as required by the examining attorney. Trademark Act Section 1(a)(2), 15
U.S.C. §1051(a)(2), requires that “[t]he application shall include specification of …
the goods in connection with which the mark is used…” See also 37 C.F.R.
§2.32(a)(6). The primary purposes for requiring a clear identification of the goods in
a trademark application are (i) to allow for informed judgments concerning
likelihood of confusion under 15 U.S.C. § 1052(d) and (ii) to allow for the proper
classification of the goods. TMEP § 1402.01 (October 2012). The examining
attorney has discretion in determining the degree of particularity that is needed to
clearly identify the goods. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed.
Cir. 2007). “The examining attorney has the discretion to issue a final refusal based
on a requirement to amend the identification of goods and/or services.” TMEP
1402.01(e).
Applicant’s services are identified as “retail sale of apparel, footwear, and
accessories.” The examining attorney argues that the term “sale” does not
sufficiently indicate the nature of the retail services, which could be mail order
services, online store services, or any other format in which goods are offered and
sold. 9 The examining attorney also argues that “the term ‘sale’… raises the specter
that the services are not rendered for the benefit of others, and thus are not services

9 Examining attorney’s brief at 3.
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within the meaning of the Trademark Act.”10 Finally, the examining attorney
argues that the word “accessories” is indefinite and should be modified to indicate
type, such as “fashion accessories, clothing accessories, footwear accessories.”11
Regarding the word “sales,” the examining attorney’s objections are squarely
consistent with the policy of the Trademark Office:
The activities recited in the identification must constitute
services as contemplated by the Trademark Act. … For
example, “sales” cannot be listed as the primary activity
in an identification, because the sale of one’s own goods or
services is not a registrable service.
TMEP § 1402.11.
In common parlance, the word “sale” applies with equal validity to the
activity of virtually any merchant or service provider that offers its goods or services
to others for payment. Moreover, it applies with equal validity to a producer of a
product (e.g., a manufacturer of clothes) that purveys that product to the market;
and a service provider that serves as a conduit for the goods of others (e.g., a store
featuring clothes) for the purpose of bringing them to market. The examining
attorney was fully justified in requiring applicant to clarify this ambiguity, because
a failure to so clarify could result in a violation of the Trademark Act, which
provides only for the registration of trademarks that distinguish goods and service
marks that distinguish services. See 15 U.S.C. §§ 1 and 45 (definition of “service
mark”). For the clothing manufacturer that “sells” its own clothes, “sale” is not a
cognizable service. By contrast, the company that establishes and operates stores

10 Id.
11 Id.
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for the purpose of bringing the goods of others to market provides a service both to
the purchasing public and the producers of the goods.
The examining attorney was also fully justified in requiring applicant to
specify the retail format in which it offers goods, and to specify the nature of
“accessories” offered. In re Omega SA, 83 USPQ2d 1541. Applicant’s failure to
comply with the examining attorney’s requirement is a valid ground for refusing
registration of the mark.
Decision: The refusal to register on grounds of likelihood of confusion under
Section 2(d) is affirmed. The refusal to register on grounds of applicant’s failure to
comply with the examining attorney’s requirement of an amendment to the
recitation of services is affirmed.