Jan T. Hornbacher

Trademark Trial and Appeal Board

Jun 26, 2003

No. 76179384 (T.T.A.B. Jun. 26, 2003)

Mailed: 26 JUN 2003
Paper No. 12
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jan T. Hornbacher
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Serial No. 76/179,384
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Robert L. Farris of Reising, Ethington, Barnes, Kisselle,
Learman & McCulloch, P.C. for Jan T. Hornbacher.
William H. Dawe, III, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
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Before Cissel, Hanak and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On December 12, 2000, Jan T. Hornbacher (applicant)
applied to register the mark BARCODE APPAREL and design,
shown below, on the Principal Register for “clothing,
namely, shirts, trousers, coats and hats” in International
Class 25.1 Applicant has disclaimed the word “Apparel.”
1 Serial No. 76/179,384. The application contained an assertion
of a date of first use and a date of first use in commerce of
November 15, 2000.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76/179,384
2
The examining attorney refused to register the mark
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because of a registration for the mark BAR CODE,
in typed form, for “clothing and apparel, namely, hats,
shoes, gloves, belts, pullovers, jogging suits, T-shirts,
shirts, tank tops, pants, shorts, jeans, sweaters, coats,
jackets and sweatshirts” in International Class 25.2
After the examining attorney made the refusal final,
this appeal followed.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant 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).
We begin by comparing applicant’s and registrant’s
marks. Applicant’s mark consists of the words BARCODE
2 Registration No. 2,082,403 issued July 22, 1997.
Ser No. 76/179,384
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APPAREL and the design of a bar code; registrant’s mark
consists of the words BAR CODE in typed form. We find that
the marks are dominated by the word “Bar Code.” It is the
only word in the cited registration. The only difference
between the way this term is used in the marks is that
applicant spells BARCODE without a space while registrant
spells it as two words. The absence of the space is not a
significant difference between the marks. Seaguard Corp.
v. Seaward International, Inc., 223 USPQ 48, 51 (TTAB 1984)
(SEA GUARD and SEAGUARD are “essentially identical”).
Applicant’s mark also includes the word “apparel,” but
this term has been disclaimed and it is clearly, at the
very least, highly descriptive of applicant’s goods. In a
similar case, the Federal Circuit held that the addition of
the word “Swing” to registrant’s mark “Laser” did not
result in the marks being dissimilar. “[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.” Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1845-45 (Fed. Cir. 2000)
(citations and quotation marks omitted). The term
Ser No. 76/179,384
4
“apparel” is even less likely to be significant here
because both applicant’s and registrant’s goods are apparel
and registrant uses the term to identify its goods
(“clothing and apparel”).
The only other difference between the marks is
applicant’s design. Applicant admits that its “mark is the
phrase “BARCODE APPAREL” in the center of a bar code
representation.” Brief at 5. Rather than creating a
different commercial impression, the bar code design
reinforces the association of applicant’s mark with the
word BAR CODE in the cited registration.
When we view the marks in their entireties, we find
that they are dominated by the virtually identical term
“bar code” and that the marks are very similar in sound,
appearance, meaning, and commercial impression.
Next, we discuss the goods. Applicant admits that the
“registration includes all of the goods listed in
appellant’s application.” Appeal Brief at 6. Thus,
applicant’s goods are identical to goods in the cited
registration. “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
Ser No. 76/179,384
5
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992).
In addition, applicant maintains without any
supporting evidence that there may be differences in the
channels of trade and prospective purchasers of the goods.3
However, the identification of goods of applicant and
registrant contain no limitations. Therefore, we do not
read in limitations even if there is evidence of record on
this point, and we must presume that the channels of trade
and purchasers are identical. Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)(“There is no
specific limitation and nothing in the inherent nature of
Squirtco’s mark or goods that restricts the usage of SQUIRT
for balloons to promotion of soft drinks. The Board, thus,
improperly read limitations into the registration”);
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”).
3 We note that applicant’s counsel asserts that “Appellant is not
aware of any use of the mark in Registration No. 2,082,403 other
than in the Registration.” Brief at 8.
Ser No. 76/179,384
6
While applicant maintains that he has no information
concerning the fame of the registered mark, the absence of
evidence of fame is of no consequence. See Majestic
Distilling, 65 USPQ2d at 1205 (citation omitted) (“Although
we have previously held that the fame of a registered mark
is relevant to likelihood of confusion, we decline to
establish the converse rule that likelihood of confusion is
precluded by a registered mark’s not being famous”).
Applicant has submitted copies of registrations of
other trademark applications and registrations for the term
“Bar Code” to support its argument that the term is weak.
However, applicant admits that “Appellant’s mark and the
mark of Registration No. 2,082,403 are the only known marks
for clothing that include the phrase “BARCODE” or “BAR
CODE.” Brief at 7. Therefore, at least when applied to
the goods in the application and cited registration, the
term BAR CODE is not weak. The fact that clothing items
may have functional bar codes used in a non-trademark sense
does not prevent the word BAR CODE from functioning as a
trademark.4
4 Of course, in this proceeding, we must presume the cited mark
is valid and entitled to its statutory presumptions. In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ 1531, 1534 (Fed. Cir. 1997).
Ser No. 76/179,384
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Finally, applicant’s counsel argues that there is no
evidence of actual confusion. However, the “lack of
evidence of actual confusion carries little weight.”
Majestic Distilling, 65 USPQ2d at 1205.
We conclude that when the marks BAR CODE and BARCODE
APPAREL and the design of a bar code are used on the same
clothing items, there is a likelihood of confusion.
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.