Howies Limitedv.Derek Alan Gray

Trademark Trial and Appeal Board

May 20, 2009

No. 91178249 (T.T.A.B. May. 20, 2009)

Mailed:
May 20, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Howies Limited
v.
Derek Alan Gray
_____

Opposition No. 91178249
to application Serial No. 77010513
filed on September 29, 2006
_____

Larry C. Jones of Alston & Bird LLP for Howies Limited.

Derek Alan Gray, pro se.
______

Before Grendel, Rogers and Taylor, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Derek Alan Gray (applicant) seeks registration on the
Principal Register of the mark HOWIE’S HOTTIES (in standard
character form) for goods identified in the application as
“caps with visors.”1

1 Serial No. 77010513, filed on September 29, 2006. The
application is based on applicant’s asserted bona fide intention
to use the mark in commerce. Trademark Act Section 1(b), 15
U.S.C. §1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91178249
2
Howies Limited (opposer) has opposed registration of
applicant’s mark. The ground of opposition is that
applicant’s mark, as applied to the goods identified in the
application, so resembles opposer’s mark HOWIES, previously
registered (in standard character form) for numerous goods
including Class 25 goods identified in the registration as
“knitwear, sportswear and leisurewear for women, men and
children, namely, ... hats, caps, ...”,2 as to be likely to
cause confusion, to cause mistake, or to deceive. Trademark
Act Section 2(d), 15 U.S.C. §1052(d).
Applicant filed an answer by which he denied the
salient allegations of the notice of opposition.
The evidence of record consists of the pleadings and
the file of applicant’s application involved in this
proceeding; opposer’s Notice of Reliance on (a) a status and
title copy of its pleaded registration, and (b) certain of
applicant’s responses to opposer’s interrogatories; and the
October 29, 2008 testimony deposition upon written questions
(at its offices in the United Kingdom) of Christopher
Anthony Cavanaugh, opposer’s Managing Director, and exhibits
thereto.

2 Registration No. 3372822, which issued on January 22, 2008.
The registration issued pursuant to Trademark Act Section 44(e),
15 U.S.C. 1126(e), based on opposer’s European Community
Registration No. 003048998, which issued on May 12, 2006 (with a
Section 44(d) priority date of February 12, 2003). The Class 25
identification of goods includes numerous other clothing items.
The registration also covers numerous goods in Classes 16 and 18.
Opposition No. 91178249
3
Applicant presented no evidence at trial.
Opposer filed a trial brief; applicant did not.
After careful consideration of the evidence of record,
we sustain the opposition.
Because opposer has properly made its pleaded
registration of record, and because opposer’s likelihood of
confusion claim is not without merit, we find that opposer
has established its standing to oppose registration of
applicant’s mark. See Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); see
also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000).
Moreover, because opposer’s pleaded registration is of
record, Section 2(d) priority is not an issue in this case
as to the mark and goods or services covered by that
registration. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue (the du Pont factors). See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315
Opposition No. 91178249
4
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Beginning with the second du Pont factor (comparison of
the parties’ goods), we find that applicant’s goods as
identified in the application, i.e., “caps with visors,” are
encompassed within and thus legally identical to the “caps”
and “hats” identified in opposer’s pleaded registration. We
therefore find that the second du Pont factor weighs in
favor of a finding of likelihood of confusion in this case.
Under the third du Pont factor (comparison of trade
channels), we find that because neither applicant’s nor
opposer’s identification of goods is limited or restricted
as to trade channels, and to the extent that applicant’s
“caps with visors” and opposer’s “caps” and “hats” are
legally identical, the trade channels for the goods likewise
are legally identical. In re Elbaum, 211 USPQ 639 (TTAB
1981). In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
We therefore find that the third du Pont factor weighs in
favor of a finding of likelihood of confusion in this case.
Under the fourth du Pont factor (conditions of
purchase), we find that applicant’s “caps with visors” and
opposer’s “caps” and “hats” are ordinary, inexpensive
consumer items which would purchased by ordinary consumers
without necessarily a great deal of care. We therefore find
Opposition No. 91178249
5
that the fourth du Pont factor weighs in favor of a finding
of likelihood of confusion in this case.
We turn finally to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc., supra. The test, under the first du
Pont factor, is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue must be considered
in their entireties, it is well-settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re Chatam International Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Finally, in cases
such as this, where the applicant’s goods are legally
Opposition No. 91178249
6
identical to the opposer’s goods, the degree of similarity
between the marks which is required to support a finding of
likelihood of confusion is less than it would be if the
goods were not identical. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992).
Applying these principles in the present case, we find
as follows.
Applicant’s mark is HOWIE’S HOTTIES. Opposer’s
registered mark is HOWIES. Obviously, the only differences
between the marks are the presence of the apostrophe in the
word HOWIE’S in applicant’s mark, and the presence of the
word HOTTIES in applicant’s mark.
First, we find that the dominant feature in the
commercial impression created by applicant’s mark is the
word HOWIE’S. It comes first in the mark, and it readily
would be perceived as the predominant source-indicator in
applicant’s mark. HOTTIES would be perceived as directly
referring back to HOWIE’S; the “hotties” are not just
“hotties,” they are Howie’s hotties. Although we consider
the mark in its entirety and do not disregard the word
HOTTIES, we find that it is the word HOWIE’S which is the
dominant feature in the source-indicating significance of
applicant’s mark. We therefore accord it greater weight in
our comparison of the marks.
Opposition No. 91178249
7
We find that the apostrophe in the word HOWIE’S in
applicant’s mark does not suffice to distinguish that word
from the word HOWIES which comprises opposer’s mark. Those
words in the respective marks sound identical, and they look
essentially identical. HOWIE’S, with the apostrophe, is in
the possessive form, while HOWIES, without the apostrophe,
technically is in the plural form. However, HOWIE in both
marks is likely to be perceived as referring to a person
named “Howie.” We find that, despite the absence of an
apostrophe in opposer’s mark, purchasers are likely to view
HOWIES, in its context as a trademark, as a possessive form
of a single person named “Howie,” not as a reference to
multiple persons named “Howie.” We therefore find that the
words HOWIES and HOWIE’S in the respective marks are highly
similar in terms of connotation and commercial impression.
We further find that the presence of the additional
word HOTTIES in applicant’s mark does not suffice to
distinguish the two marks for purposes of the first du Pont
factor. As noted above, the term “hotties” refers directly
back to a person named “Howie,” who is likely to be
perceived as being the same person as the “Howie” identified
in opposer’s mark.
For these reasons, we find that applicant’s mark is
sufficiently similar to opposer’s mark that source confusion
is likely. This is especially so given that the marks are
Opposition No. 91178249
8
or will be used on legally identical goods. We therefore
find that the first du Pont factor weighs in favor of a
finding of likelihood of confusion.
Considering all of the pertinent du Pont factors in
this case, we find that a likelihood of confusion exists.
The marks are similar, the goods and trade channels are
legally identical, and the goods are ordinary consumer items
which would not necessarily be purchased with a great degree
of care.
Because opposer has established its standing and its
Section 2(d) ground of opposition, we find that opposer is
entitled to prevail in this case.

Decision: The opposition is sustained.