Industrial Zapatera JR S.A. De C.V.

Trademark Trial and Appeal Board

Jan 16, 2007

No. 76589822 (T.T.A.B. Jan. 16, 2007)

THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.

Mailed:
January 16, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Industrial Zapatera JR S.A. De C.V.
________

Serial No. 76589822
_______

Arturo Perez-Guerrero of The Law Offices of Arturo Perez-
Guerrero for Industrial Zapatera JR S.A. De C.V.

Linda A. Powell, Trademark Examining Attorney, Law Office
117 (Loretta C. Beck, Managing Attorney).
_______

Before Seeherman, Bucher, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Industrial Zapatera JR S.A. De C.V., a Mexican
corporation, filed an application to register the mark
shown below for “footwear for men, women, and children,
namely, shoes, slippers, mules, and sandals, athletic
shoes, beach footwear, and sneakers.”1

1 Serial No. 76589822 filed April 30, 2004, based on intent to
use.
Serial No. 76589822
2

Registration was refused under Section 2(d) of the
Lanham Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, proposed for use in connection with
footwear, so closely resembles the mark BRENNTANO used in
connection with “men’s, women’s and children’s clothing,
namely, suits, skirts, sportcoats, overcoats, jackets,
sweaters, dress and sports shirts, jumpers, sport uniforms,
stockings, socks, trousers, vests, blouses, undershirts,
neckties, hats, and headbands” as to be likely to cause
confusion, to cause mistake, or to deceive.2
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.
We affirm.
The Examining Attorney contends that there is a
likelihood of confusion between applicant’s mark and
registrant’s mark because applicant’s mark BRANTANO and
Design and registrant’s mark BRENNTANO are similar in sound
and appearance and because footwear and clothing are

2 Registration No. 2200809 issued on November 3, 1998; Section 8
affidavit accepted.
Serial No. 76589822
3
related products. In support of her refusal, the Examining
Attorney submitted nine third-party use-based trademark
registrations for both clothing and footwear.
Applicant argued that the marks are not similar
because the design element of applicant’s mark creates “a
particular visual impression which is strikingly different
from the plain printed block letters of the cited
Registration”; because the marks are phonetically
different; and because the first syllable of the marks
(BRAN vs. BREN) is sufficiently different to distinguish
the marks. (Applicant’s response to the First Trademark
Office Action, pp. 4 – 6; Applicant’s Brief, p. 6).
Applicant also argued that clothing and footwear are
different products which would not be sold in the same
sections of stores, that potential consumers for
applicant’s footwear exercise a high degree of care, and
that the common portions of applicant’s mark and
registrant’s mark (i.e., “Bran,” “Brenn,” and “Tano”) are
inherently weak, thereby minimizing any likelihood of
confusion. (Applicant’s response to the First Trademark
Office Action, pp. 6-12; Applicant’s Brief, pp. 2-6). In
support of its last argument, applicant submitted seven
third-party registrations and two applications for marks
containing the elements “Bran,” “Bren,” or “Tano.”
Serial No. 76589822
4
Our determination under Section 2(d) is based on an
analysis of all the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In the case sub
judice, the record consists of the application, the third-
party registrations submitted by the Examining Attorney,
and the third-party registrations and applications
submitted by the applicant.

A. The marks of the applicant and the registrant are
similar.

We start with the well-settled principle that the
similarity or dissimilarity of the marks in their
entireties is analyzed as to appearance, sound, connotation
and commercial impression. In re E.I. du Pont de Nemours &
Co., supra. While marks must be compared in their
entireties, it is not improper to accord more or less
weight to a particular feature of a mark. In re National
Data Corporation, 753 F.2d 1056, 24 USPQ 749, 751 (Fed.
Cir. 1983).
In analyzing a composite mark comprising words and a
design, the word portion of the mark (i.e., BRANTANO) is
usually considered the dominant part of a mark because it
Serial No. 76589822
5
is more easily remembered and used in communications.
Consumers will not reference the rectangular design of
applicant’s mark when asking for or discussing applicant’s
footwear. CBS Inc. v. Morrow, 708 F.2d 157 9, 218 USPQ
198, 200 (Fed. Cir. 1983); In re Appetito Provisions Co.
Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).
Moreover, the design element of applicant’s mark is a
relatively common rectangular shape that functions as a
background for applicant’s word mark and, therefore, the
design is unlikely to be remembered when consumers are
confronted with a substantially similar word mark. In re
Decombe, 9 USPQ2d 1813, 1814 (TTAB 1988). Accordingly, the
dominant element of applicant’s mark is the term BRANTANO.
Because registrant registered BRENNTANO in standard
character form (typed drawing), its rights reside in this
term and not in any particular depiction of it. Therefore,
in our evaluation of registrant’s mark, the protection to
be given the mark must include the display of BRENNTANO in
lower-case lettering, which is the same type-style in which
applicant’s mark is depicted. In re Melville Corp., 18
USPQ2d 1386, 1387 (TTAB 1991); Sunnen Products Co. v. Sunex
International Inc., 1 UPSQ2d 1744, 1747 (TTAB 1987).
We find that the marks BRANTANO and BRENNTANO are
similar in appearance. The only difference in the two
Serial No. 76589822
6
marks is the presence of a different vowel in the first
syllable (BRAN vs. BREN) and a single “n”, rather than a
double “nn,” at the end of the first syllable in
applicant’s mark (BRAN vs. BRENN). In comparing the marks
in their entireties, we find that the overall similarities
of BRANTANO and BRENNTANO outweigh the dissimilarities.
As for the sound of the marks, they are likely to be
pronounced similarly. Although applicant’s mark contains
an “A” in the first syllable, and the registrant’s mark
contains an “E”, because of their positions in the marks,
the sound of these two letters is not likely to be
stressed, and the overall marks will sound the same.
No meaning or significance has been attributed to
either applicant’s mark BRANTANO or registrant’s mark
BRENNTANO. Because, based on this record, we must consider
BRANTANO and BRENNTANO as fanciful marks,3 and because the
appearance and sound of the marks are similar, the
commercial impression created by the marks is also similar.
We find, therefore, that the marks are similar.

3 In response to the first Trademark Office Action, applicant
stated that BRANTANO is not used as a surname, it does not have a
geographic meaning, and it does not have a meaning in any
language. In other words, it is a fanciful mark.
Serial No. 76589822
7
B. Applicant’s footwear and registrant’s clothing are
related products.

The thrust of applicant’s argument is that footwear
and clothing are sufficiently specific and distinct that
they can co-exist under the marks BRANTANO and BRENNTANO.
Applicant relies on several cases in support of its
argument. However, “as so often said, each case must be
decided on its own facts.” In re E.I. du Pont de Nemours &
Co., supra; In re British Bulldog, Ltd., 224 USPQ 854, 856
(TTAB 1984).4
It is well settled that it is not necessary that the
goods of the applicant and registrant be similar or even
competitive to support a finding of likelihood of
confusion. Likelihood of confusion may be found if the
goods are related in some manner and/or if the

4 Numerous decisions of this Board, the Court of Appeals for the
Federal Circuit, and its predecessor court, the Court of Customs
and Patent Appeals, have determined that footwear and clothing
are related for purposes of determining likelihood of confusion.
Cambridge Rubber Company v. Cluett, Peabody & Co., Inc., 286 F.2d
623, 128 USPQ 549 (CCPA 1961)(WINTER CARNIVAL for men’s and boy’s
clothing and WINTER CARNIVAL for women’s boots); General Shoe Co.
v. Hollywood Maxwell Co., 277 F.2d. 169, 125 USPQ 443 (CCPA
1960)(INGENUE for shoes and INGENUE for brassieres); In re
Keller, Heumann & Thompson Co. 81 F.2d 399, 28 USPQ 221 (CCPA
1936)(TIMELY for men’s shoes and TIMELY for men’s suits and
coats); United States Shoe Corp. v. Oxford Industries, Inc., 165
USPQ 86 (TTAB 1970)(COBBIES BY COS COB for women’s and girl’s
shirt-shifts and COBBIES for shoes); In re Pix of America Inc.,
225 USPQ 691 (TTAB 1985)(NEWPORTS for shoes and NEWPORT for
shirts); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991)
(ESSENTIALS for women’s clothing and ESSENTIALS for women’s
shoes).
Serial No. 76589822
8
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under conditions that could give rise to the mistaken
belief that they emanate from the same source. In re
Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB
1988); Seaguard Corporation v. Seaward International, Inc.,
223 USPQ 48, 51 (TTAB 1984).
In this case, we have men’s, women’s, and children’s
clothing, on the one hand, and men’s, women’s and
children’s footwear, on the other. Footwear and clothing
are complementary products.
Despite applicant’s argument to the
contrary, we believe that these goods
are related. A woman’s ensemble, which
may consist of a coordinated set of
pants, a blouse and a jacket, is
incomplete without a pair of shoes,
which match or contrast therewith.
Such goods are frequently purchased in
a single shopping expedition. When
shopping for shoes, a purchaser is
usually looking for a shoe style or
color to wear with a particular outfit.
The items sold by applicant and
registrant are considered complementary
goods. They may be found in the same
stores, albeit in different
departments. We are convinced that
this is a sufficient relationship
between the goods to support a holding
of likelihood of confusion where both
sets of goods are sold under the same
mark.

Serial No. 76589822
9
In re Melville Corp., supra. Because of the complementary
nature of the goods, consumers are likely to believe that
footwear and clothing sold under similar marks emanate from
the same source.
Moreover, the Examining Attorney submitted nine use-
based registrations for both footwear and clothing. The
third-party registrations submitted by the Trademark
Examining Attorney have probative value to the extent that
they serve to suggest that the products listed therein are
of a kind that emanate from a single source. In re
Infinity Broadcasting Corporation, 60 USPQ2d 1214, 1217-
1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck
Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
The fact that the third-party marks have been adopted and
registered for footwear and clothing is probative of the
fact that those products are related.
In view of the third-party registrations and the
complementary nature of footwear and clothing, we find that
applicant’s footwear and registrant’s clothing are related.

Serial No. 76589822
10
C. Applicant’s footwear and registrant’s clothing move in
the same channels of trade and classes of consumers.

It is well-settled that the issue of likelihood of
confusion between applied-for and registered marks must be
determined on the basis of the goods or services as they
are identified in the involved application and cited
registration, rather than on what any evidence may show as
to the actual nature of the products, their channels of
trade and/or classes of purchasers. Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987); In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). Because there are no restrictions as to
channels of trade in either the applicant’s or registrant’s
description of goods, we must therefore consider the
applicant’s footwear and the registrant’s clothing as if
they were being sold in all of the normal channels of trade
to all of the normal purchasers for such goods. Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, supra; Toys
R Us v. Lamps R Us, 219 USPQ 340, 343 (TTAB 1983).
Channels of trade means how and to whom the products
are sold. As indicated supra, footwear and clothing are
related products that may be purchased by the same person
in the same shopping trip in order to acquire an ensemble
that is attractive from the standpoint of color and style.
Serial No. 76589822
11
In re Melville Corp., supra; In re Pix of America, Inc.,
supra; B. Rich’s Sons, Inc. v. Freida Originals, Inc., 176
USPQ 284, 285 (TTAB 1972). Since both clothing and
footwear are items purchased by ordinary consumers, the
classes of purchasers overlap. Even if clothing items and
footwear are sold in different areas of department stores,
because the same consumers may purchase footwear and
clothing at the same time, the same consumers may encounter
these goods in the course of a single shopping trip.
Moreover, one of the items listed in the registrant’s
registration are socks. Socks are often sold in shoe
stores or in the same department as shoes and, therefore,
socks and shoes are sold in the same channels of trade.

D. The degree of consumer care is not a significant
likelihood of confusion factor.

There is no evidence to suggest that purchasers of
footwear are any more sophisticated than purchasers of
clothing (or any other retail products). Thus, the
purchasers are considered to be average consumers.
Further, many of the footwear items identified in
applicant’s application and the registrant’s registration
can be inexpensive items that would be purchased without a
great deal of care (e.g., beach footwear and socks).
Serial No. 76589822
12
E. Registrant’s BRENNTANO mark is not a weak mark.
Applicant argued that the common elements of
applicant’s mark and registrant’s mark (i.e., “Bran,”
“Bren,” and “Tano”) are so commonly used that registrant’s
mark is only entitled to a narrow scope of protection. In
support of its argument, applicant submitted copies of the
following registrations:5
Registration
Number
Mark Goods
2,776,828

Handbags, tote bags,
luggage, purses, wallets
and backpacks
2,944,045 BRENT MORGAN Scarves and ties
2,074,835 ARNOLD BRANT Men’s clothing
1,118,836 Insulated coats and vests
2,899,706 MARK MONTANO
Women’s and girls’
clothing
2,887,448 PLANTANO POWER
Headwear, shirts, and
jackets
1,493,633 BRENTANO’S Retail book store services

Applicant’s argument is not well taken. First, third-
party registrations, absent evidence of actual use of those
marks, are entitled to little weight on the question of
likelihood of confusion. Third-party registrations are not

5 Applicant submitted copies of Application Serial No. 78591362
for the mark CB C-BRAN and Design for baseball caps and
Application Serial No. 76554080 for the mark BREN D WEAR
COLLECTIONS for clothing. Third-party applications have no
evidentiary value other than to show that they were filed.
Serial No. 76589822
13
evidence of use of the marks shown therein. Without
evidence of use, the third-party registrations prove
nothing about the impact of the third-party marks on
purchasers in terms of conditioning consumers as to the
existence of similar marks in the marketplace. AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268 (CCPA 1973); In re Hub Distributing, Inc., 218 USPQ
284, 285-286 (TTAB 1983). Third-party registrations, may
of course, have probative value, in the manner of
dictionary definitions, to show that a term has a
significance in a particular industry. However, the
limited number of registrations submitted by applicant, and
the different connotations of the various elements in those
marks (e.g., BRENT in BRENT MORGAN has the connotation of a
given name), do not indicate that BRENNTANO has a common
significance that would entitle this mark to a limited
scope of protection vis-à-vis BRANTANO for related goods.
We accordingly find that applicant’s mark BRANTANO and
Design, if used in connection with “footwear for men,
women, and children, namely, shoes, slippers, mules, and
sandals, athletic shoes, beach footwear, and sneakers,” so
closely resembles the registered mark BRENTANNO for
clothing as to be likely to cause confusion, to cause
mistake, or to deceive.
Serial No. 76589822
14
Decision: The refusal to register is affirmed.