J. G. Hook, Inc.v.Vaughn McCall

Trademark Trial and Appeal Board

Dec 11, 1998

No. 91101645 (T.T.A.B. Dec. 11, 1998)

Paper No. 13
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB DEC. 11,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
J.G. Hook, Inc.
v.
Vaughn McCall
_____
Opposition No. 101,645 to application Serial No. 74/718,287
filed on August 21, 1995
_____
Roberta Jacobs-Meadway, Joel S. Goldhammer and Ned E. Barlas of
Panitch Schwarze Jacobs & Nadel, P.C. for J.G. Hook, Inc.
Vaughn McCall, pro se.
______
Before Cissel, Quinn and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Vaughn McCall has filed an application to register the
mark "HOOKUP" and design, as reproduced below,
Opposition No. 101,645
2
for "clothing, namely t-shirts, jerseys, jackets, and jeans;
footwear; and headgear, namely hats and caps".1
J.G. Hook, Inc. has opposed registration on the ground
that it "has used ’J.G. HOOK’, ’HOOK’ and other marks ... (the
’HOOK’ marks) as trademarks in commerce for men’s, women’s and
children’s wearing apparel since at least as early as 1975";
that, in particular, opposer is the owner of valid and subsisting
registrations for the following marks and goods:
(1) the mark "J.G. HOOK" and design, as
reproduced below,
for (a) "men’s and women’s sport shirts and
women’s dresses";2 (b) "shirts, dresses,
blouses, pants, socks, shorts, jackets,
sweaters, skirts, kilts, belts, and
scarves";3 and (c) "men’s outer jackets,
overcoats, trench coats, rain coats, suits,
sports coats and tailored pants";4

1 Ser. No. 74/718,287, filed on August 21, 1995, which alleges a date
of first use anywhere of February 5, 1993 and a date of first use in
commerce of August 18, 1994.
2 Reg. No. 1,068,167, issued on June 21, 1977, which sets forth dates
of first use of August 12, 1975; renewed. The registration states
that: "The name ’J.G. Hook’ is fanciful and is not the name of a
particular living individual."
3 Reg. No. 1,193,945, issued on April 20, 1982, which sets forth dates
of first use of August 12, 1975; combined affidavit §§8 and 15. The
registration, which also covers "jewelry," indicates that: "[T]he
mark 'J.G. Hook' is not the name of a particular living individual and
the title is fanciful."
4 Reg. No. 1,305,088, issued on November 13, 1984, which sets forth
dates of first use of January 13, 1983; combined affidavit §§8 and 15.
Opposition No. 101,645
3
(2) the mark "J.G.HOOK" and design, as
illustrated below,
for "handbags, wallets, brief cases and
luggage";5
(3) the mark "J. G. HOOK" and design, as
depicted below,
for "women’s clothing, namely, shirts, dresses,
blouses, pants, socks, shorts, jackets, coats,
sweaters, skirts, kilts, belts, and scarves; and
men’s clothing, namely, outer jackets, overcoats,
trench coats, rain coats, suits, sports coats and
tailored pants;6
(4) the mark "HOOK SPORT" and design, as
shown below,

5 Reg. No. 1,231,924, issued on March 22, 1983, which sets forth dates
of first use of December 1980; combined affidavit §§8 and 15. The
registration recites that: "The name 'J.G. Hook' is merely fanciful
and does not identify a particular individual."
6 Reg. No. 1,617,734, issued on October 16, 1990, which sets forth
dates of first use of January 1, 1986; combined affidavit §§8 and 15.
Opposition No. 101,645
4
for "ladies’ sportswear, namely, pants,
short[s], shirts, blouses, sweaters, jackets,
coats and dresses";7
(5) the mark "HOOK WEAR" and design, as
reproduced below,
for "men’s, women’s and children’s wearing
apparel; namely, pants, shorts, shirts,
dresses, shirts [sic], blouses, vests,
sweaters, jackets, and coats";8
(6) the mark "J.G. HOOK JEANSWEAR" for
"jeans, pants, skirts, shorts, shirts and
jackets";9
(7) the mark "J.G. HOOK JEANSWEAR" and
design, as depicted below,

7 Reg. No. 1,620,047, issued on October 30, 1990, which sets forth
dates of first use of December 1, 1989; combined affidavit §§8 and 15.
The word "SPORT" is disclaimed.
8 Reg. No. 1,733,210, issued on November 17, 1992, which sets forth
dates of first use of November 1, 1991; combined affidavit §§8 and 15.
The term "WEAR" is disclaimed.
9 Reg. No. 1,768,122, issued on April 27, 1993, which sets forth dates
of first use of July 15, 1992. The term "JEANSWEAR" is disclaimed.
Opposition No. 101,645
5
for "jeans, pants, skirts, shorts, shirts and
jackets";10
(8) the mark "J.G. HOOK" for "men’s and
women’s apparel; namely, suits, pants,
skirts, dresses, shorts, sweaters, coats,
rainwear, jackets, blazers, vests, socks,
scarves, shirts and blouses";11 and
(9) the mark "HOOK SUIT" and design, as
illustrated below,
for "men’s and women’s apparel; namely,
suits, pants, skirts, shorts and jackets";12
that opposer "is well known in the relevant trade and by
consumers as ’HOOK’"; that its "’HOOK’ [m]arks are extremely well
and favorably known to retailers and others in the relevant trade
as the marks of Hook"; that the goods sold by applicant under his
"HOOKUP" and design mark "are similar to those sold under
[opposer’s] ... ’HOOK’ [m]arks"; that such goods "are advertised
and promoted in the same ways"; that the respective goods "are

10 Reg. No. 1,817,982, issued on January 25, 1994, which sets forth
dates of first use of July 15, 1992. The term "JEANSWEAR" is
disclaimed. In addition, the registration states that: "’J.G. HOOK’
does not identify a living individual."
11 Reg. No. 1,814,984, issued on January 4, 1994, which sets forth
dates of first use of August 12, 1975. The registration indicates
that: "’J.G. HOOK’ is a fictitious name and does not identify any
living individual."
12 Reg. No. 1,836,229, issued on May 10, 1994, which sets forth dates
of first use of July 1, 1992. The word "SUIT" is disclaimed.
Opposition No. 101,645
6
purchased by the same class of customers"; and that applicant’s
mark, when used in connection with his goods, "so resembles
[opposer’s] ... ’HOOK’ [m]arks" as to be likely to cause
confusion, mistake or deception.
Applicant, in his answer, has admitted that opposer is
the owner of the registrations pleaded in the notice of
opposition and that such registrations are valid and subsisting,
but has otherwise denied the salient allegations of the notice of
opposition.
The record includes the pleadings; the file of the
involved application; and, as part of opposer’s case-in-chief,
the testimony, with exhibits, of its president and chief
operating officer, Gary Kane. Opposer, as the rest of its case-
in-chief, submitted a notice of reliance upon certified copies of
its previously mentioned registrations, showing in each instance
that the registrations are subsisting and owned by opposer, and
filed a notice of reliance on various articles from printed
publications in general circulation.13 Applicant, however, did
not take testimony, nor did he otherwise properly introduce any
evidence in his behalf.14 Briefs have been filed, but an oral
hearing was not requested.

13 Although opposer, among other things, asserts in the notice of
reliance that such "material is relevant to the issue of fame of
Opposer’s ’Hook’ marks," it is pointed out that, to the extent that
the text of the articles is relied upon to establish the truth of the
statements therein, such statements are clearly hearsay and thus fail
to demonstrate the claimed fame of opposer’s marks.
14 Opposer, on August 1, 1997, filed an motion "to strike exhibits
attached to, and inadmissible factual statements contained within,
Applicant’s Trial Brief" since the exhibits "were not made of record
during Applicant’s testimony period." Inasmuch as the motion, which
Opposition No. 101,645
7
Opposer’s priority of use of the "HOOK"-formative marks
which are the subjects of its pleaded registrations is not in
issue inasmuch as the certified copies of such registrations show
that the registrations, as admitted by applicant in his answer,
are subsisting and owned by opposer. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974). The record, in any event, establishes that, with
the exception of its "HOOK SPORT" mark for girls’ sportswear,
opposer is in fact the prior user of its various "J.G. HOOK"
marks and the derivatives thereof, such as its "HOOK SPORT,"
"HOOK WEAR" and "HOOK SUIT" marks for clothing.15 The only real
issue to be determined, therefore, is whether applicant’s
"HOOKUP" and design mark, when used in connection with t-shirts,
jerseys, jackets, jeans, hats, caps and footwear, so resembles
one or more of opposer’s various "HOOK"-formative marks for a
variety of wearing apparel that confusion is likely as to the
source or sponsorship of the parties’ respective goods.16

is uncontested, is in any event well taken, the motion is granted.
Trademark Rules 2.127(a) and (l); and TBMP §540. We hasten to add,
however, that even if such exhibits were considered as part of the
evidentiary record, they would make no difference in the disposition
of this case.
15 Applicant, having failed to take testimony or otherwise properly
present evidence in his behalf, is limited to the August 21, 1995
filing date of his application as the earliest date on which he can
rely in this proceeding. See, e.g., Lone Star Manufacturing Co., Inc.
v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368, 369 (CCPA 1974) and
Columbia Steel Tank Co. v. Union Tank & Supply Co., 277 F.2d 192, 125
USPQ 406, 407 (CCPA 1960).
16 To the extent that opposer, by referring to "the J.G. Hook family of
marks" in its reply brief, appears to be relying upon the contention
that it has a family of marks for its products which is based on the
word "HOOK," we note that as stated in J & J Snack Foods Corp. v.
McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891-92 (Fed. Cir.
1991):
Opposition No. 101,645
8
According to the record, opposer was founded in 1974 by
Max Raab, who coined the name "J.G. HOOK"17 and is currently the
sole owner of opposer as well as its chief executive officer,
chairman of the board and creative director. Opposer initially
manufactured shirts under its "J.G. HOOK" marks before expanding

A family of marks is a group of marks having a
recognizable common characteristic, wherein the marks are
composed and used in such a way that the public associates
not only the individual marks, but the common characteristic
of the family, with the trademark owner. Simply using a
series of similar marks does not of itself establish the
existence of a family. There must be a recognition among
the purchasing public that the common characteristic is
indicative of a common origin of the goods. ....
Recognition of the family is achieved when the pattern
of usage of the common element is sufficient to be
indicative of the origin of the family. It is thus
necessary to consider the use, advertisement, and
distinctiveness of the marks, including assessment of the
contribution of the common feature to the recognition of the
marks as of common origin.
Contrary to the reference in opposer’s reply brief, it simply cannot
be said on this record that opposer has demonstrated the existence of
a family of "HOOK"-formative marks. The evidence fails to show that
such marks have been promoted in a manner sufficient to create a
recognition or awareness among the purchasing public of the common
ownership thereof so that a family of marks, characterized by the term
"HOOK" as its distinguishing element, in fact exists. See, e.g., La
Maur, Inc. v. Bagwells Enterprises, Inc., 199 USPQ 601, 606 (TTAB
1978) and Polaroid Corp. v. American Screen Process Equipment Co., 166
USPQ 151, 154 (TTAB 1970). Moreover, the mere ownership of a number
of marks sharing a common feature, or even ownership of many
registrations therefor, is alone insufficient to demonstrate that a
family of marks exists. See, e.g., Hester Industries, Inc. v. Tyson
Foods, Inc., 2 USPQ2d 1646, 1647 (TTAB 1987); Consolidated Foods Corp.
v. Sherwood Medical Industries Inc., 177 USPQ 279, 282 (TTAB 1973);
Polaroid Corp. v. American Screen Process Equipment Co., supra; and
Polaroid Corp. v. Richard Mfg. Co., 341 F.2d 150, 144 USPQ 419, 421
(CCPA 1965). Accordingly, since opposer has not established its
assertion of a family of "HOOK" marks, the issue of likelihood of
confusion must be determined by comparing applicant’s mark for his
goods with each of opposer’s marks for its various products.
17 In particular, Mr. Kane testified that, in keeping with a nautical
theme for opposer’s marks and products: "Max Raab, when he was
dreaming this up, J.G. was for junior grade, meaning junior grade
officer, and Hook was another name for an anchor, so the hook or the
anchor became very important to us." (Kane dep. at 40.)
Opposition No. 101,645
9
into women’s sportswear. In 1989, however, opposer transformed
itself from a manufacturer of clothing to a licensing company
under which all of its goods were made and sold by other
manufacturers through licenses of opposer’s various "HOOK"-
formative marks. Such arrangement lasted until late 1995. At
present, opposer is "primarily a licensor" of such marks, having
begun its licensing program in 1982 with men’s wear, boys’ wear
and certain items of women’s wear. (Kane dep. at 6.) Opposer,
however, "recently" has "formed a joint venture for manufacturing
and distributing women’s coordinated sportswear," including
sports jackets, skirts, sweaters, pants, blouses and tops and
bottoms, under its "J.G. HOOK" marks. (Id.) Opposer currently
sells "adult clothing, both genders; children’s clothing, both
genders; all the accessory items that go with both, and a
complete line of home furnishings." (Id. at 9.) In particular,
Mr. Kane emphasized that, like applicant, opposer sells t-shirts
and, in fact, has sold "tons of them". (Id. at 59.) Opposer
applies its various marks to its clothing using labels, hang tags
and neck inserts.
Opposer, at the time Mr. Kane joined the company in
1986, had yearly sales of over $100 million, of which its J.G.
Hook division generated "about $70 million". (Id. at 10.) In
addition to tailored traditional or career clothing for men and
women which, like its boys’ and girls’ apparel, it has
continuously sold under its "J.G. HOOK" marks, opposer since at
about 1989 has sold casual sportswear, including socks, t-shirts,

Opposition No. 101,645
10
sweat clothes and women’s jogging suits, under the mark "HOOK
SPORT". Since about 1992, opposer has licensed its "J.G. HOOK"
marks for such men’s wear accessories as belts. Currently, in
its tailored men’s clothing lines, opposer has annual sales of
between $4 million to $5 million, while yearly sales of casual
men’s sportswear amount to "around $4 million and climbing."
(Id. at 24.) While sales of its men’s belts are "very embryonic"
and those of "socks are just getting started," opposer’s present
annual sales of men’s "dress shirts are about a million dollars."
(Id.)
Opposer’s yearly sales of children’s apparel, which
started with sales of boys’ clothing in 1982, have ranged from "a
million or so" initially to "about $8 million, which is a very
sizable boyswear company," according to Mr. Kane, who also noted
that the latter figure was "pretty evenly broken down between J.G
Hook and Hook Sport." (Id. at 25.) Around 1992, opposer
commenced licensing its "J.G. HOOK" marks for girls’ dresses and
began licensing its "HOOK SPORT" mark for girls’ sportswear in
the latter part of 1996.
Opposer is responsible for all of its national
advertising, with the ads for its goods being created by its "own
in-house advertising agency". (Id. at 28.) Opposer’s women’s
wear items are nationally advertised in such magazines as Marie
Claire, Redbook, Fashions of The Times and Mirabella, while its
men’s wear products are promoted nationwide in such publications
as Esquire and GQ. Opposer is also "the largest apparel
manufacturer in New York [City] ... to advertise on urban
Opposition No. 101,645
11
panels," which Mr. Kane described as being "an above-ground
advertising vehicle that is on or around a subway stop ...."
(Id. at 32.) In addition, opposer promotes its goods by
distributing press kits concerning its newest fashion collections
to magazine and newspaper editors who cover the apparel trade.18
Opposer coordinates its national advertising campaigns so as to
link all of its various products, including those manufactured
and sold by its licensees, with its "J.G. HOOK" marks and trade
name.19 Opposer’s licensees, "by contrast, are responsible for
paying for all co-op advertising; all trade publications; [and]
any space ... they take for [trade] shows, [or] showrooms". (Id.
at 29.) Opposer, however, assists its licensees by providing
them with camera-ready artwork for use in their advertising of
its goods.
The channels of trade through which opposer’s clothes
are distributed include such mail-order catalog outlets as the

18 A sample press kit includes, inter alia, a photograph which contains
the caption: "This red-and-white-striped ’henley’ tee-shirt from J.G.
Hook lends a nautical feeling to comfortable khaki drawstring shorts."
(Opposer’s Exhibit 9.)
19 The reason for coordinated advertising, Mr. Kane explained, is to
"make sure that the consumer understands that J.G. Hook [merchandise]
came from the same mother." (Kane dep. at 56.) Specifically, he
noted that:
As knowledgeable as ... consumers are out there, they
have no clue that we have over 30 licensees marking this
product, just as they have no clue that Ralph Lauren doesn’t
sit there and sew all those garments together in his
basement.
When they see this [advertising] in these various
publications, they have to think that J.G. Hook was
developed and marketed and sold all under one big roof.
(Id.)
Opposition No. 101,645
12
upscale Bloomingdale’s by Mail and the "deep discounter"
Chadwick’s. (Id. at 33.) At the retail store level, opposer’s
goods are "in all the department stores ... and thousands of
specialty stores," ranging "all the way from some of the higher
echelon Federated stores all the way down to but not including
Wal-Mart" or "anything with a ’mart’ on the end" of its name.
(Id. at 34.) Specifically, the apparel marketed under opposer’s
"J.G. HOOK" marks and its "HOOK SPORT," "HOOK WEAR" and "HOOK
SUIT" derivatives thereof are sold, in the case of its women’s
wear, through such retail outlets as "Stern’s," "Parisian,"
"JCPenney," "Von Maur" and "Belk," while its men’s wear is sold
in such stores as "Dunlop," "JCPenney," "Belk" and "AFF" (Army
and Air Force Exchange). The children’s clothing sold under
opposer’s marks is available through "Federated stores, Dayton-
Hudson, Nordstrom, ... [and] JCPenney." (Id. at 35.) Basically,
according to Mr. Kane, opposer sells its "J.C. HOOK" brands of
clothes "coast to coast," that is, in all 50 states as well as
all U.S. territories and possessions.20 (Id.)
Opposer is often referred to by store buyers and in the
garment trade press simply as "Hook". In particular, after first
being mentioned in an article by its full name of J.G. Hook, the
article thereafter will typically refer to opposer as just
"Hook". On occasion, publications have made a play on opposer’s
name, such as an August 24, 1988 article from WWD (Women’s Wear

20 The record also reveals that, due to its success in selling apparel
under its marks, opposer in the past five years has expanded its
licensing program to include eyewear and, as mentioned earlier, home
Opposition No. 101,645
13
Daily) headlined: "Liberty of London has a new Hook-up; J.G.
Hook Inc. uses Liberty of London fabrics for line of sportswear".
Consumers also customarily refer to opposer simply as "Hook".
Opposer, as a reflection thereof, has successfully policed its
"Hook" name and "HOOK"-formative marks, having prevailed upon a
party to abandon an application to register the mark "HOOK UP"
and a hook design for clothing items which included t-shirts and
sweat shirts, while obtaining from another party a surrender of a
registration for the mark "HOOKA STYLE" for hats, shirts,
sweaters and jeans.21
Finally, according to Mr. Kane, opposer is concerned
about the "HOOKUP" and design mark which applicant seeks to
register because: "Our name is very widely recognized as a name
associated with classical American-made merchandise ..., good
perceived value, [and] a very high quality level." (Id. at 74.)
As a result, Mr. Kane testified that:
We are not going to let anything interfere
with the retailers’ or the consumers’
perception of J.G. Hook. And it’s not only
J.G. Hook, but it’s all our derivative names
that look and sound so much like this one
that Mr. McCall wants to use. And not only
does he want to use our name, but he wants to
throw a hook or an anchor up in the front of
it to further confuse or mislead people, and
we just absolutely won’t tolerate it.
(Id.) Applicant, as noted previously, offered no properly
admissible evidence in support of its application to register.

furnishings such as furniture, wallpaper, bedding, lamps, decorative
pillows and floral pieces.
21 In addition, opposer has secured the abandonment of another party’s
application to register the mark "HOOK UP" for jewelry.
Opposition No. 101,645
14
Turning to the issue of likelihood of confusion, we
find upon consideration of the pertinent factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973), that confusion as to source or affiliation is
likely to occur. As a starting point, it is settled that the
registrability of an applicant’s mark must be evaluated on the
basis of the identifications of goods set forth in the involved
application and each of the registrations of record, regardless
of what the record may reveal as to the particular nature of the
respective goods, their actual channels of trade, or the class of
purchasers to which they are in fact directed and sold. See,
e.g., Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987). In particular, it
is well settled that, absent any specific limitations or
restrictions in the identifications of goods as listed in the
applicant’s application and the opposer’s registrations, the
issue of likelihood of confusion must be determined in light of
consideration of all normal and usual channels of trade and
methods of distribution for the respective goods. See, e.g., CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983); and Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Here, applicant’s goods are broadly identified in his
application as "clothing, namely t-shirts, jerseys, jackets, and
Opposition No. 101,645
15
jeans; footwear; and headgear, namely hats and caps ". As so
described, such goods plainly are identical in part and are
otherwise complementary, and hence closely related, to the items
of clothing identified in opposer’s registrations, which also
broadly set forth its apparel products. In particular, as to
those goods which are identical in legal contemplation, it is
clear that applicant’s "t-shirts" and "jerseys" are respectively
encompassed by, for instance, registrant’s "shirts" and
"sweaters,"22 while both parties market items generically known as
"jackets" and "jeans". Thus, even if the record reflected
applicant’s arguments that the actual channels of trade and
customers for such goods are different, with applicant’s
"unconventional, untraditional" t-shirts, jerseys, jackets,
jeans, footwear, caps and hats being "sold in small stores" to
purchasers who are "exactly opposite" to those who purchase
opposer’s "traditional and conventional" clothing, it is still
the case that the parties’ items of apparel must be considered as
suitable for sale through the same channels of trade, including
department stores, specialty clothing retailers and mail-order
outlets, to the same classes of ordinary consumers, such as
teenagers and adults. Clearly, if the same or complementary
items of wearing apparel were to be sold under identical or

22 We judicially notice, in this regard, that The Random House
Dictionary of the English Language (2d. ed. 1987) at 1027 lists
"jersey" as meaning, inter alia, "1. a close-fitting, knitted sweater
or shirt." It is settled that the Board may properly take judicial
notice of dictionary definitions. See, e.g., Hancock v. American
Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953) and University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 101,645
16
similar marks, confusion as to the origin or affiliation thereof
would be likely to occur.
Applicant contends, however, that confusion is not
likely because his "HOOKUP" and design mark "has several
distinguishing characteristics that sets [sic] it apart from any
other marks, particularly J.G. Hook and [its various] Hook
brands." Specifically, notwithstanding opposer’s assertion that
"[t]he letter ’H’ in McCall’s HOOKUP Mark comprises a stylized
hook, which is visually similar to the anchor design [and letter
’J’] of the various HOOK Marks," applicant maintains that:
[T]he "H" by itself visually says Hookup.
Now lets [sic] compare the letters. Hookup
uses unconventional letters [and] even the
two "Os" in Hookup are different from each
other. And about the "H" which opposer
claims resembles a "J", a close look
obviously shows a Hook connected by a bar to
an arrow representing the "UP" in HOOKUP!
And finally lets [sic] take a look at the
hooks. The hook in Hookup is displayed
always with the bar and arrow pointing up,
with just the "H" or total word Hookup and
design. The J.G. Hook brand uses an anchor
style hook with a conventional design [of]
letters. Hookup has an unconventional
design, [incorporating] a fish hook and an
arrow in its design.
However, as opposer correctly notes, our principal reviewing
court has pointed out the general proposition that, "[w]hen marks
would appear on virtually identical goods ..., 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, 1700 (Fed. Cir. 1992). We
agree with opposer that, when the respective marks are considered
in their entireties, applicant’s "HOOKUP" and design mark is
Opposition No. 101,645
17
substantially similar in sound, appearance, connotation and
overall commercial impression to each of opposer’s "J.G. HOOK"
marks, including its "J.G. HOOK JEANSWEAR" marks, and their
derivative "HOOK SPORT," "HOOK WEAR" and "HOOK SUIT" marks. Both
applicant’s mark and each of opposer’s marks, in particular,
share the arbitrary term "HOOK" as a prominent and distinguishing
feature thereof. Moreover, as opposer accurately observes,
applicant’s "hook design [in the letter ’H’] looks like the
letter ’J’, thereby giving the visual impression of ’J HOOKUP,’
[and thus] further aggravating the likelihood of confusion
between the HOOOKUP Mark and the J.G. HOOK and the other HOOK
Marks."
While, as applicant maintains, there are indeed
differences between his mark and each of opposer’s marks that are
apparent on the basis of a side-by-side comparison,23 when the
respective marks are used in connection with items of apparel,
the overall commercial impression engendered by applicant’s mark
is substantially similar to that projected by each of opposer’s
marks. The record, moreover, reflects that opposer customarily
is known both in the garment trade and to the retail purchasing

23 A side-by-side comparison, however, is not the proper test to be
used in determining the issue of likelihood of confusion since it is
not the ordinary way that consumers will be exposed to the marks.
Rather, it is the similarity of the general overall commercial
impression engendered by the marks which must determine, due to the
fallibility of memory and the consequent lack of perfect recall,
whether confusion as to source or sponsorship is likely. The proper
emphasis is thus on the recollection of the average purchaser, who
normally retains a general rather that a specific impression of
trademarks or service marks. See, e.g., In re United Service
Distributors, Inc., 229 USPQ 237, 239 (TTAB 1986); and In re Solar
Energy Corp., 217 USPQ 743, 745 (TTAB 1983).
Opposition No. 101,645
18
public simply as "Hook" and that there are no other entities in
the fashion field, as evidenced among other things by opposer’s
having successfully policed its marks, which utilize marks for
wearing apparel which feature the word "HOOK" as their
distinguishing element. Additionally, although we cannot agree
with opposer that, on this record, its various "J.G. HOOK" marks
and the derivatives thereof are famous marks, opposer has
sufficiently established that, beginning in 1975, it has had
substantial nationwide sales of apparel under its various "HOOK"-
formative marks and has made appreciable coordinated promotional
efforts, through the distribution of press kits and print
advertising, so as to link all of its clothing products, including
those manufactured and sold by its licensees, with its "J.G. HOOK"
marks and trade name. In view thereof, opposer’s various "J.G. HOOK,"
"J.G. HOOK JEANSWEAR," "HOOK SPORT," "HOOK WEAR" and "HOOK SUIT"
marks must be considered to be relatively well known marks which,
having achieved a measure of strength and recognition as indicia
of source and quality of product, are correspondingly entitled to
a broader scope of protection.
Consequently, consumers and those in the apparel field
could reasonably believe, upon encountering applicant’s highly
similar "HOOKUP" and design mark for t-shirts, jerseys, jackets,
jeans, footwear, hats and/or caps, that such items of apparel are
part of a new or expanded line of goods emanating from or
sponsored by the same entity which markets clothing for men,
women and children under the marks "J.G. HOOK," "J.G. HOOK
JEANSWEAR," "HOOK SPORT," "HOOK WEAR" and "HOOK SUIT".
Opposition No. 101,645
19
Decision: The opposition is sustained and registration
to applicant is refused.
R. F. Cissel
T. J. Quinn
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board