Henkel S.P.A.

Trademark Trial and Appeal Board

Mar 24, 2006

No. 78293275 (T.T.A.B. Mar. 24, 2006)

Mailed:
24 March 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Henkel S.P.A.
________

Serial No. 78293275
_______

Jane T. Collen of Collen IP for Henkel S.P.A.

Katherine Stoides, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Walters, Rogers and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

Applicant Henkel S.P.A. applied to register the mark
MORRIS (in typed or standard character form), on the
Principal Register for goods ultimately identified as
“shoes, slippers and boots; clothing, namely, tuxedos,
suits, waistcoats, jackets, trousers, skirts, shirts,
blouses, coats, overcoats, raincoats, t-shirts, sweaters,
polo neck and button-neck sweaters, cardigans, shorts,
blue-jeans, anoraks; neckties, foulards, scarves; belts;
hats, caps; articles of clothing made of leather, namely
jackets, trousers, overcoats, waistcoats all aforementioned
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78293275
2
goods not used in connection with golf or golf-related
apparel; gloves, excluding hunting gloves and golf gloves”
in Class 25.1
The examining attorney refused to register applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because of two registrations owned by different
parties. The first registration2 is for the mark TOM MORRIS
(in typed or standard character form) for “clothing;
namely, shirts, sweaters, vests, suits, pants, hats, socks,
shoes, belts, wristbands, ties, gloves, rainwear, scarves
and shawls” in Class 25.3
The second registration4 is on the Supplemental
Register for the mark:

1 Serial No. 78293275, filed August 28, 2003, is based on
applicant’s assertion of a bona fide intention to use the mark in
commerce.
2 No. 1,835,884 issued May 10, 1994, Renewed. Tom Morris Limited
is the listed owner.
3 The registration also includes the following goods in Class 28:
“golf equipment; namely, golf clubs, golf balls, golf ball
markers, golf bags, head covers for golf clubs and golf tees.”
4 No. 555,769 issued March 4, 1952, Third Renewal. Boss
Manufacturing Company is identified as the current owner.
Ser No. 78293275
3
for “woolen and cotton hunting gloves” in Class 25.
After the examining attorney made the refusals final,
this appeal followed.
In likelihood of confusion cases, we analyze the facts
as they relate to the 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); Recot, Inc.
v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir.
2000).
Two factors that are often critical in likelihood of
confusion determinations are the similarities of the mark
and the relatedness of the goods. Regarding the goods in
Registration No. 1,835,844, they are identical to
applicant’s goods inasmuch as the registration and
application both include shirts, sweaters, suits, hats,
shoes, and belts. The goods are also overlapping. The
registered mark includes shirts, pants, sweaters, ties,
gloves, and rainwear. Applicant seeks registration for
essentially the same goods: trousers (pants), raincoats
(rainwear), t-shirts (shirts), polo neck and button-neck
sweaters (sweaters), cardigans (sweaters), blue jeans
(pants), neckties (ties), and gloves, excluding hunting
gloves and golf gloves (gloves). We are aware that
Ser No. 78293275
4
applicant has included the following limitation in its
identification of goods “all aforementioned goods not used
in connection with golf or golf-related apparel.” Even if
we assume that this limitation applied to all the
previously listed goods, we must nonetheless conclude that
the goods are identical to the extent that registrant’s
goods are not limited to golf-related clothing.5 Because
registrant’s goods are not limited, we must read the
identification of the goods to include clothing items that
are not used in connection with golf or golf-related
apparel. Therefore, registrant’s and applicant’s goods
are, in part, identical and overlapping goods.
“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, 1701 (Fed. Cir. 1992). In addition, when
goods are identical, we must also consider that the goods
move in identical channels of trade and that the purchasers

5 Normally, we would read the phrase as only limiting the goods
before the semicolon, i.e., articles of clothing made of leather,
namely jackets, trousers, overcoats, waistcoats all
aforementioned goods not used in connection with golf or golf-
related apparel.” Also, inasmuch as diverse clothing is worn
while playing golf on public and private courses, we are not
clear how shirts, shorts, and similar items “not used in
connection with golf” differ from shirts or shorts used in
connection with golf.
Ser No. 78293275
5
are identical. Schieffelin & Co. v. Molson Companies Ltd.,
9 USPQ2d 2069, 2073 (TTAB 1989) (“[M]oreover, since there
are no restrictions with respect to channels of trade in
either applicant's application or opposer's registrations,
we must assume that the respective products travel in all
normal channels of trade for those alcoholic beverages”);
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
Therefore, we cannot rely on applicant’s Internet
printout showing what is apparently registrant’s current
marketing operation to limit the scope of its registration.
Furthermore, applicant’s argument (Brief at 4) that
registrant’s unrestricted goods “are specifically golf
related, sold through and targeted at a specific audience
in a specific industry” because of applicant’s evidence of
how registrant is actually using its mark is at odds with
long-established precedent in trademark cases.
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 the sales of goods are
directed.

Ser No. 78293275
6
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See
also 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”).
Also, while applicant argues (Reply Brief at 3) that
there is no evidence that Tom Morris Limited “has ever been
inclined to expand into the general apparel or fashion
industries,” we point out that this is not a case of the
registrant expanding the use of its mark on a different,
but related, item. Rather this case involves a registrant
who has a registration for its mark on the identical goods.
As discussed above, we cannot limit the registered mark to
any particular type of clothing item beyond what is set out
in the registration. However, applicant is not without a
remedy if it believes that there would be no likelihood of
confusion if the identifications of the parties’ goods were
restricted. Applicant may file a petition to cancel under
the provision of Section 18 of the Trademark Act. 15
U.S.C. § 1068 (“In such proceedings the Director may refuse
to register the opposed mark, may cancel the registration,
in whole or in part, may modify the application or
Ser No. 78293275
7
registration by limiting the goods or services specified
therein…”).
Next, we compare the similarities and dissimilarities
of the marks, TOM MORRIS and MORRIS. It is clear that the
marks are identical to the extent that they both contain
the word MORRIS and they are different because registrant’s
mark adds the given name TOM. The examining attorney cites
two cases in which there was a likelihood of confusion when
one party’s mark is a surname and the other mark is the
surname with a given name. See In re Sawyer of Napa Inc.,
222 USPQ 923 (TTAB 1983) (SAWYER and TOM SAWYER held to be
similar); and Modern Shoe Co. v. B.B. Walker Shoe Co., 170
USPQ 530, 531 (TTAB 1971) (“‘WALKER’ and ‘JOHNNIE WALKER’
could be regarded as one and the same individual. These
names when used as marks will create the same impression
and such impression is greatly enhanced because they are
used on directly competitive goods, even as to price”).
The Modern Shoe case also noted that “it is not
uncommon to identify an individual by a surname without
reference to a first or Christian name, for example Nixon
or Rockefeller in reference to well-known political
figures.” Id. More recently, the Federal Circuit
discussed the question of likelihood of confusion when
applicant sought registration of the mark JOSE GASPAR GOLD
Ser No. 78293275
8
and registration was refused because of a registration for
the mark GASPAR’S ALE. The court explained:
With respect to JOSE, the Board correctly observed
that the term simply reinforces the impression that
GASPAR is an individual’s name. Thus, in accord with
considerable case law, the JOSE term does not alter
the commercial impression of the mark. See E & J
Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291-
92 (9th Cir. 1992) (affirming that GALLO and JOSEPH
GALLO are similar); Nina Ricci, S.A.R.L. v. E.T.F.
Enters., Inc., 889 F.2d 1070, 1073-74 (Fed. Cir. 1989)
(holding that VITTORIO RICCI and NINA RICCI are
similar); John B. Stetson Co. v. Stephen L. Stetson
Co., 85 F.2d 586, 587 (2d Cir. 1936) (holding that
STEPHEN L. STETSON and STETSON are similar); but see
Brennan’s Inc. v. Brennan’s Rest., L.L.C., 360 F.3d
125, 133 (2d Cir. 2004) (explaining that BRENNAN’S and
TERRANCE BRENNAN’S are not similar because “the
addition of the first name ‘Terrance’ to defendant’s
mark is meaningful”). In sum, the first name JOSE
modifies the surname GASPAR and serves to emphasize
that GASPAR is a name.

In re Chatham International Inc., 380 F.3d 1340, 71 USPQ2d
1944, 1946 (Fed. Cir. 2004).
Similarly, when considered in their entireties, TOM
MORRIS and MORRIS both emphasize the same term, “Morris.”
Obviously, “Morris” is the only term in applicant’s mark
and the term “Tom” likewise points to the surname “Morris.”
Therefore, we conclude that the marks’ similarities in
sound, appearance, meaning, and commercial impression
outweigh their differences.
When we consider that the marks TOM MORRIS and MORRIS
are intended to be used on identical and overlapping goods,
Ser No. 78293275
9
confusion would be likely in this situation. Therefore, we
affirm the examining attorney’s refusal to register based
on Registration No. 1,835,884.
We next look at the refusal based on Registration No.
555,769. Again, we begin by comparing the goods.
Applicant’s goods include gloves, excluding hunting gloves
and golf gloves, as well as various clothing items.
Registrant’s goods are woolen and cotton hunting gloves.
Unlike the situation with the goods in Registration No.
1,835,884, applicant has eliminated the identical goods
that are in Registration No. 555,769 from its
identification of goods. Therefore, the goods here are not
identical or overlapping. However, while not identical, it
is clear that both identifications include different types
of gloves. More importantly, regarding the other items,
the examining attorney argues (Brief at 10) that
“applicant’s wearing apparel, identified in broad terms, is
presumed to include items of clothing that are suitable for
hunting or are likely to be worn by those engaged in
hunting.” The examining attorney has included several
registrations to support its argument (Final Office Action
at 3) that “[c]ustomers are accustomed to encountering
hunting equipment along with wearing apparel in general or
sportswear specifically.” See, e.g., Registration No.
Ser No. 78293275
10
2,893,507 (clothing and hunting and fishing vests); No.
2,898,894 (clothing and hunting safety harness); and No.
2,876,960 (clothing and hunting camouflage).
The examining attorney argues (Brief at 11) that
“applicant’s items of wearing apparel are presumably
suitable for use by hunters and are therefore potentially
complementary goods to the registrant’s hunting gloves.”
We agree that there is nothing that limits many of
applicant’s goods from being used for hunting purposes.
Applicant points out (Brief at 5) that “hunter consumers
are unlikely to dress in items such as waistcoats, trousers
and leather jackets in addition to hunting gloves when
participating in any hunting season.” However, applicant’s
goods also include shirts, jackets, coats, anoraks, hats,
and caps and these items could be a type that is worn while
hunting. We agree with the examining attorney that
registrant’s hunting gloves would be related to applicant’s
shirts, hats, and similar items.
Furthermore, we cannot agree with applicant’s
arguments (Reply Brief at 4) that the goods travel in
different channels of trade or that the “likelihood that a
single group will encounter and be confused by the parties’
trademarks is unlikely.” As we explained, applicant’s
goods would include clothing items such as shirts, jackets
Ser No. 78293275
11
and hats that could be worn for hunting and these items may
clearly be found not just in the same general retail stores
but also in the same section of these stores. The same
customers in the same trip to the store could, therefore,
encounter goods with applicant’s and registrant’s mark and
assume that they originate from the same or an associated
source.
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). There is also no evidence for us to
conclude that these goods “are purchased after careful
consideration and comparison” as applicant asserts. Brief
at 6.
Next, we compare the similarities and dissimilarities
of the marks. The marks MORRIS and MORRIS FEEL GLOVES are
similar to the extent that both begin with the identical
term MORRIS. They are different in that registrant’s mark
is depicted in stylized form and it also includes the
descriptive words “Feel Gloves.” The fact that
Ser No. 78293275
12
registrant’s mark is shown in stylized form is not legally
significant because applicant’s mark is not limited to any
particular style. Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 939 (Fed. Cir. 1983) (“[T]he argument
concerning a difference in type style is not viable where
one party asserts rights in no particular display. By
presenting its mark merely in a typed drawing, a difference
cannot legally be asserted by that party. Tomy asserts
rights in SQUIRT SQUAD regardless of type styles,
proportions, or other possible variations. Thus, apart
from the background design, the displays must be considered
the same”).
Next, we look at the additional language in
registrant’s mark “Feel Gloves.” Inasmuch as the mark is
registered on the Supplemental Register, we can assume that
this terminology is merely descriptive, or in the case of
the term “gloves” for “gloves,” generic.6 In re
Consolidated Foods Corp., 200 USPQ 477, 478 n.2 (TTAB 1978)
(“Registration of the same mark on the Supplemental
register is not prima facie evidence of distinctiveness; in
fact, such a registration is an admission of
descriptiveness”). See also Quaker State Oil Refining

6 “Morris” was likely considered to be a surname and, therefore,
registrable on the Supplemental Register.
Ser No. 78293275
13
Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363
(CCPA 1972). Because of the descriptive nature of these
terms, they are less likely to be as important in
distinguishing the marks as the name “Morris.” Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845-45
(Fed. Cir. 2000) (citations and quotation marks omitted)
(“[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”).
Similarly here, both marks begin with the identical
word, the surname “Morris.” Registrant then adds the term
“Feel Gloves” for its hunting gloves. The marks sound and
look similar inasmuch as their initial term “Morris” is
identical and the additional descriptive wording in
registrant’s mark would not distinguish the marks.
Furthermore, their commercial impressions and meanings
would likewise be similar because of the dominance of the
common word “Morris.” While we do not ignore the
additional wording in registrant’s mark, it would be
unlikely that customers would rely on this wording to
distinguish the marks. Also, the marks are not used on
Ser No. 78293275
14
identical products and it would be expected that the owner
of the mark for MORRIS FEEL GLOVES would discontinue the
use of the words “Feel Gloves” if it used the mark on
related clothing items that were not gloves. Under these
circumstances, when prospective purchasers of hunting
clothing who are familiar with registrant’s MORRIS FEEL
GLOVES for hunting gloves encounter the mark MORRIS for
hunting shirts and jackets, they are likely to assume that
the goods come from a common source. Therefore, we hold
that there is also a likelihood of confusion regarding the
mark and goods in Registration No. 555,769 and the mark for
which applicant seeks registration.
Applicant also points out (Brief at 2) that the “marks
TOM MORRIS for clothing and golf equipment and MORRIS FEEL
GLOVES for hunting gloves are both registered in the same
class by two unrelated parties; however they continue to
co-exist in the market place without likelihood of
confusion.” However, even if these two registrations were
confusingly similar, these registrations cannot be used to
justify the registration of another confusingly similar
mark. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB
1987). Furthermore, in this case the differences between
the marks TOM MORRIS and MORRIS FEEL GLOVES is greater than
in the instant case. Therefore, the existence of these two
Ser No. 78293275
15
registrations does not indicate that confusion is unlikely
when the marks MORRIS and TOM MORRIS and MORRIS and MORRIS
FEEL GLOVES are used on the identified goods.
Decision: The refusals to register applicant’s mark
in view of Registration Nos. 555,769 and 1,835,884 under
Section 2(d) are affirmed.