Invista North America S.A.R.L.

Trademark Trial and Appeal Board

Mar 8, 2007

No. 78598843 (T.T.A.B. Mar. 8, 2007)

Oral Hearing: Mailed:
December 5, 2006 March 8, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Invista North America S.A.R.L.
________

Serial Nos. 78598843 and 786108081
_______

Patricia Smink Rogowski of Connolly Bove Lodge & Hutz LLP
for Invista North America S.A.R.L.

Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 102 (Thomas V. Shaw, Managing Attorney).
_______

Before Hairston, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Invista North America S.A.R.L. seeks registration on
the Principal Register of the mark XTRA LIFE LYCRA(standard
character claimed) for goods ultimately identified as
“fabric for the manufacture of clothing” in International
Class 242 and the mark shown below for goods ultimately

1 On April 27, 2006, the Board consolidated these appeals for
purposes of briefing and oral argument.

2 Application Serial No. 78598843, filed March 31, 2005, alleging
a bona fide intention to use the mark in commerce under Trademark
Act Section 1(b). 15 U.S.C. §1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 78598843 and 78610808
2
identified as “fabrics for the manufacture of clothing” in
International Class 24.3

Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s marks, when used with its identified goods, so
resemble the registered mark XTRALIFE (in typed form)
for “textile fabrics made of natural and/or synthetic
fibers and combinations thereof for use in the manufacture
of napery” in International Class 244 as to be likely to
cause confusion, mistake or deception.5

3 Application Serial No. 78610808, filed April 18, 2005, alleging
a bona fide intention to use the mark in commerce under Trademark
Act Section 1(b). 15 U.S.C. §1051(b).

4 Registration No. 1653115, issued August 6, 1991; renewed.

5 Both applications originally also contained goods in
International Class 22 (“synthetic fibers and filaments for the
manufacture of clothing”) and International Class 25 (“swimwear;
bodysuits; girdles; exercise apparel, namely, sports bras,
leotards, bike shorts, ski-wear, track suits, sweat pants,
sweatshirts; t-shirts, shirts, vests, jumpers, trousers,
sweaters; athletic uniforms; socks; stockings; pantyhose;
sportswear, namely, shirts, t-shirts, vests, jumpers,
sweatshirts, sweat pants; trousers; shorts; jackets; coats; hats;
lingerie and headwear”). The examining attorney issued the
Section 2(d) refusals only against the goods in International
Class 24 in each application. On August 16, 2005, the USPTO
granted applicant’s divisional request and placed the goods in
these two classes in corresponding child applications.
Serial Nos. 78598843 and 78610808
3
When the refusal was made final, applicant filed this
appeal and requested reconsideration. The examining
attorney denied the request for reconsideration and the
appeal was resumed. Briefs have been filed and an oral
hearing was held upon applicant’s request. We reverse the
refusal to register.
As a preliminary matter, the examining attorney has
objected to the material attached to applicant’s main brief
as untimely. Inasmuch as this material was not submitted
prior to briefing it is untimely and has been given no
consideration. Trademark Rule 2.142(d). With regard to
the printouts of applicant’s prior registrations attached
to applicant’s reply brief, although applicant listed these
registrations as prior registrations in its applications,
applicant did not specifically reference them in its
responses to the office actions. Moreover, applicant has
submitted them with its reply brief in support of its
argument that its LYCRA mark is well-known, which is for a
different purpose than the listing in the applications to
assert ownership of prior registrations, and, thus, the
examining attorney has not had an opportunity to address
these prior registrations in the context of this new
Serial Nos. 78598843 and 78610808
4
purpose. Therefore, these printouts are untimely and have
not been considered.6
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods. 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).
We begin with the first du Pont factor, i.e., whether
applicant’s XTRA LIFE LYCRA marks and registrant’s mark
XTRALIFE are similar or dissimilar when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression. The analysis is not whether the
marks can be distinguished when compared side-by-side.

6 This is not a case where an applicant submitted a listing of
registrations in its response to a refusal and the examining
attorney failed to advise applicant that a mere listing of
registrations is insufficient to make such registrations of
record. See TBMP §1207.03 (2d ed. rev. 2004).
Serial Nos. 78598843 and 78610808
5
Rather, we must determine whether the marks are
sufficiently similar that there is a likelihood of
confusion as to source and, in making this determination,
we must consider the recollection of the average purchaser
who normally retains a general, rather than specific,
impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975). Finally, we note that
it is appropriate to accord greater importance to the more
distinctive elements in the marks than to the less
distinctive elements in determining whether the marks are
similar. In re National Data Corporation, 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
The examining attorney argues that applicant’s marks
are “essentially a combination of its house mark with a
registered mark,” (br. p. 2) and that “[w]hen viewing the
presentation of the registered mark in applicant’s mark,
the similar elements are not presented in a manner where
the source-identifying significance of registrant’s mark
becomes lost in a new commercial impression.” Br. pp. 3-4.
The examining attorney further argues, with regard to the
mark in application Serial No. 78610808, that the word
portion is more likely to be impressed upon a purchaser’s
memory than the design.
Serial Nos. 78598843 and 78610808
6
In response, applicant argues that the term LYCRA is
the dominant element in its marks. Further, applicant
argues that “LYCRA is a well known mark and has meaning to
consumers, as it would be associated with applicant and
particular types of stretch and recovery fabric” and the
“LYCRA component has a significant effect in reinforcing
the differences between the goods.” Br. p. 11. Applicant
argues that in view of the LYCRA element its marks create a
different connotation and commercial impression than
registrant’s mark. Applicant also asserts that XTRALIFE is
a weak mark and should be accorded only a limited
protection.
In support of its position that XTRALIFE is a weak
mark, applicant submitted several third-party registrations
that include XTRA LIFE or EXTRA LIFE in the mark. None of
these registrations are for fabric. Applicant also
submitted printouts of two of its active prior
registrations as set out below:
Registration No. 2780953 for XTRA LIFE for “nylon
fibers sold as an integral component of
upholstery fabrics for industrial, commercial,
and residential applications, fibers” in
International Class 24; and

Registration No. 2485680 STAINMASTER XTRA LIFE
for “carpets” in International Class 27.

Serial Nos. 78598843 and 78610808
7
Third-party registrations are not evidence of use and,
thus, are of little probative value in an analysis of the
strength of the marks. AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973).
Third-party registrations may be “useful to demonstrate the
sense in which a term is used in ordinary parlance and they
can show that a particular term has been adopted by those
engaged in a certain field or industry and that said term
has less than arbitrary significance with respect to
certain goods or services.” In re Dayco Products-
Eaglemotive, Inc., 9 USPQ2d 1910, 1912 (TTAB 1988)
(IMPERIAL adopted by others in the vehicular field to refer
to that term’s ordinary significance as a laudatory
designation). While the third-party registrations are not
particularly probative on the question of whether XTRALIFE
has a particular significance in the field of fabric, we
take judicial notice of the following dictionary
definitions for EXTRA and LIFE:7
EXTRA 1. More than or beyond what is usual,
normal, expected, or necessary 2. Better than
ordinary; superior. The American Heritage
Dictionary of the English Language (4th ed. 2000);

LIFE 1. i. A specific, characteristic manner of
existence. Used of inanimate objects. The

7 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Serial Nos. 78598843 and 78610808
8
American Heritage Dictionary of the English
Language (4th ed. 2000); and

LIFE 7. the period of existence, activity, or
effectiveness of something inanimate, as a
machine, lease, or play: The life of the car may
be ten years. Random House Unabridged Dictionary
(2006).

Based on these dictionary definitions, it is clear
that EXTRA LIFE suggests that the goods will exist or last
for more than or beyond what is usual. There is also no
reason or evidence to suggest that this meaning of “life”
or “extra life” would not apply to fabric. Therefore, at a
minimum, the mark XTRALIFE is highly suggestive of a
characteristic of the goods and, thus, we find the mark
XTRALIFE is not a particularly strong mark which would be
entitled to the same scope of protection that a more
arbitrary and less suggestive mark would receive.
In support of its argument that the LYCRA element of
its marks is well-known, applicant provided a submission
from what appears to be a webpage entitled Encylopedian
noting that LYCRA is a well-known trademark for spandex and
other webpages that discuss LYCRA and spandex.8 We also
take judicial notice of the following dictionary
definitions for LYCRA and SPANDEX:

8 These other printouts of record are not sufficiently legible to
decipher what specifically is written there.
Serial Nos. 78598843 and 78610808
9
LYCRA: a brand of spandex. Random House
Unabridged Dictionary (2006);

LYCRA: a trademark used for a brand of spandex.
The American Heritage Dictionary of the English
Language (4th ed. 2000);

SPANDEX: a synthetic fiber composed of a long-
chain polymer, used chiefly in the manufacture of
garments to add elasticity. Random House
Unabridged Dictionary (2006); and

SPANDEX: a synthetic fiber or fabric made from a
polymer containing polyurethane, used in the
manufacture of elastic clothing. The American
Heritage Dictionary of the English Language (4th
ed. 2000).

We agree with applicant that LYCRA is the dominant
element in applicant’s marks in view of its inherently
distinctive and arbitrary nature in comparison to the
suggestive XTRA LIFE element. We also note the strength of
the LYCRA mark as evidenced by its entry in the widely
known dictionaries and corroborated by the Encyclopedian
printout. With regard to the appearance and sound of
applicant’s and registrant’s marks, we find that they
differ in view of the addition of LYCRA and, in the case of
application Serial No. 78610808, the design element adds to
the difference in appearance. As to connotation, the
dictionary definition of record clearly shows that
applicant’s marks have the added meaning of a stretchy
fabric or fiber used for clothing. Thus, while the marks
share the phrase XTRA LIFE, given the dominant element of
Serial Nos. 78598843 and 78610808
10
LYCRA in applicant’s marks, the overall commercial
impressions of the marks are different.
The examining attorney advances the argument that the
addition of a house mark does not obviate a likelihood of
confusion, citing In re Dennison Mfg. Co., 229 USPQ 141,
146 (TTAB 1986). However, as the Board stated in Knight
Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1315
(TTAB 2005), quoting from New England Fish Company v. The
Hervin Company, 511 F.2d 562, 184 USPQ 817, 819 (CCPA
1975):
...there is no arbitrary rule of law that if two
product marks are confusingly similar, likelihood
of confusion is not removed by use of a company
or housemark in association with the product
mark. Rather, each case requires a consideration
of the effect of the entire mark including any
term in addition to that which closely resembles
the opposing mark. (citation omitted)

The Board further quoted from the underlying

Board decision in New England Fish:

In accordance with the reasoning in this
decision, the Court of Customs and Patent Appeals
and this Board have held that, where a party is
seeking to register a composite mark consisting
of a product mark in association with a housemark
or a surname and registration is opposed by a
prior user of a mark alleged to be similar to the
said product mark and there are some recognizable
differences in the asserted conflicting product
marks or the product marks in question are highly
suggestive or play upon commonly used or
registered terms, the addition to applicant’s
mark of the housemark was sufficient to render
the marks as a whole registrably distinguishable.
Serial Nos. 78598843 and 78610808
11

New England Fish Company v. The Hervin Company, 179
USPQ 743, 746 (TTAB 1973) (emphasis added).

In Knight Textile, the Board found that although
applicant’s mark NORTON MCNAUGHTON ESSENTIALS incorporated
the whole of opposer’s mark ESSENTIALS, because ESSENTIALS
“is a highly suggestive term...under our case law,
applicant’s addition of its house mark...suffices to
distinguish the two marks when viewed in their entireties.”
Knight Textile, supra, 184 USPQ at 1316.
Taking into consideration the somewhat limited scope
of protection to be afforded registrant’s mark XTRALIFE and
the strength of applicant’s LYCRA mark, we find that the
dissimilarities outweigh the similarities and the factor of
the similarity of the marks does not weigh in favor of a
finding of likelihood of confusion.
We now turn to a consideration of the goods identified
in the applications and the cited registration. It is well
settled that goods need not be similar or competitive in
nature to support a finding of likelihood of confusion.
The question is not whether purchasers can differentiate
the goods themselves, but rather whether purchasers are
likely to confuse the source of the goods. See Helene
Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618
(TTAB 1989). Further, we must consider the applicant’s
Serial Nos. 78598843 and 78610808
12
goods and the cited registrant’s goods as they are
described in the applications and registration. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1987).
In support of his position, the examining attorney
submitted evidence in the form of third-party use-based
registrations that support his argument that applicant’s
fabric for use in the manufacture of clothing is related to
registrant’s fabric for use in the manufacture of napery.
See, e.g., Reg. No. 1835887 (ECHO for, inter alia, textile
piece goods; namely, cotton, wool, silk, linen and
synthetics for use in the manufacture of bed linens, home
furnishings, table linens and clothing); Reg. No. 1817969
(COLTEJER for fabrics for use in the manufacture of
clothing, curtains, table cloths and bed covers); Reg. No.
2487892 (DEWTECH for, inter alia, non-woven fabric for the
manufacture of clothing articles, bed and table covers ...
table linen ...); Reg. No. 2522979 (OPTIMER for, inter
alia, polyester and cotton blend fabrics for use in the
manufacture of linens and clothing; bath, bed, and table
linen); Reg. No. 2328602 (JESVRVM for, inter alia, fabrics
for use in the manufacture of clothing articles, table
Serial Nos. 78598843 and 78610808
13
linen, bath linen, bed linen); and Reg. No. 2462890 (DRI-
RELEASE for, inter alia, polyester and cotton blend fabrics
for use in the manufacture of linens and clothing; bath,
bed, and table linen). Third-party registrations which
individually cover a number of different items, and which
are based on use in commerce, may serve to suggest that the
listed goods are of a type which may emanate from a single
source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993). In addition, the examining attorney submitted
two webpages that show various types of fabric for sale,
including “apparel” and “home décor” fabric. See,
www.fashionfabricsclub.com and www.fabric.com. Finally,
the examining attorney submitted the following dictionary
definition of napery: Napery Household linen, especially
table linen. The American Heritage Dictionary of the
English Language (4th ed. 2000). The examining attorney
also requests judicial notice be taken of the same
dictionary definition that appears in Webster’s Third New
International Dictionary (1986).
In response, applicant argues that the identification
of goods in its applications and the cited registration are
each limited to different uses. Further, applicant argues
that its fabrics have certain qualities for use in swimwear
and active wear, essentially arguing that its mark LYCRA
Serial Nos. 78598843 and 78610808
14
further limits its goods to a stretchy fabric which is not
a property consumers would associate with table linen.
We find the third-party registrations sufficiently
persuasive to conclude that applicant’s and registrant’s
goods are related. We cannot agree with applicant that the
presence of LYCRA in the mark may serve to limit the goods;
we must look to the identification to find any possible
limitations. Nor do we think that, even given the
implication of stretchy fabric based on the presence of
LYCRA in the mark, consumer’s would automatically exclude
stretchy or resilient fabric from use for napery.9 Thus,
although applicant’s and registrant’s goods are not for the
same purpose, they are related and the du Pont factor of
the similarity of the goods favors a finding of likelihood
of confusion.

9 We note that the prior cases cited by the examining attorney
where finished clothing items were found to be related to fabric
are not particularly persuasive inasmuch as the issue here
involves different end uses, clothing and napery. The cases
referenced by applicant are more on point. See, e.g., Goodall-
Sanford, Inc. v. The Landers Corp., 89 USPQ 69, 70 (CCPA 1951)
(“It is clear to us that while, broadly, the goods of the parties
may be held to possess the same descriptive properties, they are
so utterly different in quality, texture, appearance, and use
that it would not be good sense to state that they possess such
common properties as to bring them within the liberal
interpretation referred to by the Commissioner.”); Glen Raven
Cotton Mills, Inc. v. Jayvee Brand, Inc., 165 USPQ 791 (TTAB
1970) (use of similar marks on fabric for upholstery, awnings and
outdoor clothing, and on infant sleepwear not likely to cause
confusion).
Serial Nos. 78598843 and 78610808
15
Considering the channels of trade, the examining
attorney correctly states that absent limitations in the
identifications we must consider all normal channels of
trade and registrant’s Section 8 declaration submitted by
applicant cannot be used to limit the channels of trade.
While there is no evidence on the question of whether table
linen and clothing would be manufactured by the same
entity, we must consider the normal channels of trade, and
it is not clear that these goods would share the same
normal channels of trade. Applicant states that its goods
are purchased by clothing manufacturers and registrant’s
goods are purchased by table linen manufacturers. Further,
applicant states that “[e]ven assuming one company
purchased both types of fabrics, such fabrics would be
purchased by difference [sic] divisions within a company
for different uses.” Br. p. 22. The examining attorney
has submitted evidence of different types of fabric being
sold on the same website; however, we do not find this
evidence persuasive given the identification of goods
specifically indicating the fabrics are for
“manufacturing.” “Manufacturing” implies as part of the
conditions of sale that the purchasers are manufacturers
and, in the case of the manufacturing of clothing or
napery, that they are sophisticated purchasers who exercise
Serial Nos. 78598843 and 78610808
16
heightened care in their purchasing decisions. Thus, to
the extent that applicant’s and registrant’s channels of
trade would overlap, the purchasers would be sophisticated.
Therefore, the factor of the conditions of sale weighs
against a finding of likely confusion.
In conclusion, we find that because of the
dissimilarities in the marks and the conditions of sale,
which would necessarily involve sophisticated purchasers,
confusion is not likely between applicant’s marks and the
mark in the cited registration.
Decision: The refusals to register under Section
2(d) of the Trademark Act are reversed in each
application.