Kathryn A. De Court

Trademark Trial and Appeal Board

Sep 30, 2010

No. 77479384 (T.T.A.B. Sep. 30, 2010)

Mailed:
Sept. 30, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kathryn A. De Court
________

Serial No. 77479384
_______

Anne E. Yates of Adorno & Yoss LLC for Kathryn A. De Court.

Paul E. Fahrenkopf, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Grendel, Kuhlke and Cataldo, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Kathryn A. De Court (“applicant”) seeks registration
on the Principal Register of the mark MARTINI JEANS (in
standard character form; JEANS disclaimed) for goods
identified in the application as “women’s jeans.”1

1 Serial No. 77479384, filed on May 20, 2008. The application is
based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a). May 16, 2008 is alleged in the application to
be the date of first use of the mark and the date of first use of
the mark in commerce.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77479384
2
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark, as applied to the goods identified in the
application, so resembles the mark depicted below,

previously registered on the Principal Register, for goods
which as identified in the application include Class 25
“clothing, namely shirts, neckties, T-shirts, bathrobes,
neckerchieves, belts, gloves, scarves, shoes and hats”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 has appealed the final refusal. Applicant
and the Trademark Examining Attorney have filed briefs on
appeal. After careful consideration of all of the
evidence, and of the arguments made by applicant’s counsel
and by the Trademark Examining Attorney, we affirm the
refusal to register.

2 Reg. No. 2352990, issued on June 30, 2000. Section 8 affidavit
accepted; Section 15 affidavit acknowledged. The goods
identified in the registration also include “watches and jewelry”
in Class 14, and “luggage, tote bags, sport bags and handbags” in
Class 18.
Ser. No. 77479384
3
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 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). In our analysis of the du
Pont factors, we need consider and weigh only those factors
as to which there is pertinent evidence of record.
“...[t]he thirteen DuPont factors must be considered when
they are of record. However, not all of the DuPont factors
are relevant or of similar weight in every case. Indeed,
any one of the factors may control a particular case.” In
re Dixie Restaurants, Inc., supra, 41 USPQ2d 1531 at 1533
(internal citations and quotation marks omitted).
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. “The
fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
Ser. No. 77479384
4
characteristics of the goods and services in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 at 29 (CCPA 1976). “While it must
consider each factor for which it has evidence, the Board
may focus its analysis on dispositive factors, such as
similarity of the marks and relatedness of the goods
[and/or services].” Han Beauty Inc. v. Alberto-Culver Co.,
236 F.3d 1333, 57 USPQ2d 1557 at 1559 (Fed. Cir. 2001).
Under the first du Pont factor, we 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,
73 USPQ2d 1689, 1691. 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
Ser. No. 77479384
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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).
We find that the dominant feature of both applicant’s
mark and the cited registered mark, in terms of their
functions as indications of source, is the word MARTINI.
MARTINI is arbitrary as applied to the clothing goods
involved here. The disclaimed word JEANS in applicant’s
mark is generic, and although it informs purchasers what
the goods are, it has essentially no significance as an
indication of source. The martini glass design element in
the cited registered mark merely reinforces the impression
of the word MARTINI. The stylized lettering in which the
mark is depicted does not legally distinguish the marks,
because applicant seeks to register her mark in standard
character form, which would entitle her to use and display
her mark in any reasonable lettering style, including, we
find, the cursive script in which the cited registered mark
is depicted. See In re RSI Systems, LLC, 88 USPQ2d 1445
(TTAB 2008). In short, we must and shall consider the two
marks in their entireties, but we find that the word
Ser. No. 77479384
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MARTINI dominates the source-indicating commercial
impression of each of the marks, and we therefore shall
accord that element of the marks more weight in our
comparison of the marks under the first du Pont factor.
In terms of appearance, we find that the marks differ
to the extent that applicant’s mark includes the word JEANS
and to the extent that the cited registered mark includes a
martini glass design element. (As noted above, the
stylized lettering of the cited registered mark is legally
insignificant). However, we find that these points of
dissimilarity are outweighed by the basic similarity
between the marks which results from the presence of the
dominant and arbitrary word MARTINI in each of the marks.
In terms of sound, we find that the two marks are
highly similar and indeed identical but for the presence of
the generic one-syllable word JEANS in applicant’s mark.
In terms of connotation and commercial impression, we
find that the marks differ only to the extent that
applicant’s mark includes the generic word JEANS, which has
essentially no source-indicating significance. The
dominant word MARTINI in both marks is arbitrary as applied
to the goods, and to the extent that it has any connotation
at all, the connotation is the same in both marks. The
presence of the arbitrary word MARTINI in both marks
Ser. No. 77479384
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creates the same commercial impression in each of the
marks.
For these reasons, we find that applicant’s mark and
the cited registered mark are similar when considered in
their entireties in terms of appearance, sound, connotation
and commercial impression. The first du Pont factor
accordingly weighs in favor of a finding of likelihood of
confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as identified in
the application and in the cited registration,
respectively. “Likelihood of confusion may be found based
on any item that comes within the identification of goods
in the involved application and registration.” In re La
Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008). In
comparing the goods identified in the application and in
the cited registration, respectively, “…it is the
identification of goods that controls, not what extrinsic
evidence may show about the specific nature of the goods.”
Id., 86 USPQ2d at 1646. This includes any extrinsic
evidence relating to the relative cost or quality of the
goods.
It is not necessary that the respective goods be
identical or even competitive in order to find that they
Ser. No. 77479384
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are related for purposes of our likelihood of confusion
analysis. That is, the issue is not whether consumers
would confuse the goods themselves, but rather whether they
would be confused as to the source of the goods and/or
services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
The goods and/or services need only be sufficiently related
that consumers would be likely to assume, upon encountering
the goods under similar marks, that the goods originate
from, are sponsored or authorized by, or are otherwise
connected to the same source. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
Applying these principles in the present case, we find
as follows. Applicant’s jeans and registrant’s clothing
items obviously are complementary clothing items that could
be purchased and used together; it is not dispositive that
they are different specific items of clothing. Also, the
Trademark Examining Attorney has submitted (November 8,
2009 denial of request for reconsideration) dozens of
third-party use-based registrations which include in their
identifications of goods both jeans and various of the
clothing items identified in the cited registration. Many
Ser. No. 77479384
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of the third-party registrations submitted by applicant
(see below) likewise include both jeans and other clothing
items in their identifications of goods. Although such
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, they
nonetheless have probative value to the extent that they
serve to suggest that the goods listed therein are of a
kind which could be marketed by a single source under a
single mark. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988).
Based on the evidence of record, we find that the
goods identified in applicant’s application are
sufficiently related to the Class 25 goods identified in
the cited registration that confusion is likely to result
if the goods were to be marketed under the similar marks
involved in this case. The second du Pont factor weighs in
favor of a finding of likelihood of confusion.
Under the third du Pont factor, we determine the
similarity or dissimilarity of the trade channels in which
and the purchasers to whom the products are or would be
marketed. Because there are no limitations or restrictions
in either applicant’s identification of goods or in
registrant’s identification of goods, we presume that the
Ser. No. 77479384
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respective goods are marketed in all normal trade channels
for those goods and to all normal classes of purchasers for
such goods, regardless of what any extrinsic evidence might
show to be the actual trade channels and purchasers for the
parties’ goods. In re Jump Designs LLC, 80 USPQ2d 1370
(TTAB 2006); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB
1994); In re Elbaum, 211 USPQ 639 (TTAB 1981). We find
that the related clothing items identified in applicant’s
application and in the cited registration are or could be
marketed in the same trade channels (including both the
internet and brick-and-mortar stores) and to the same
classes of purchasers. Accordingly, we find that the third
du Pont factor weighs in favor of a finding of likelihood
of confusion.
Under the fourth du Pont factor, we consider the
conditions under which the goods are purchased. Applicant
argues that confusion is unlikely because applicant’s jeans
are expensive (retailing for over one hundred dollars) and
are sold in expensive boutiques, typically with the
assistance of salespersons. Applicant argues that, prior
to purchase, consumers must examine the jeans with care to
ensure the desired style and fit of the jeans. Applicant
argues that its jeans are purchased by sophisticated
Ser. No. 77479384
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“fashion-conscious” consumers who enter the marketplace
knowing what they are looking for.
These arguments are not persuasive. As noted above,
our likelihood of confusion determination must be based on
the goods as they are identified in the application and
registration, respectively, regardless of what extrinsic
evidence or argument might show about the actual goods.
The “women’s jeans” identified in applicant’s application
(and the various clothing items identified in the cited
registration) must be presumed to include ordinary,
inexpensive clothing items that would be purchased by
ordinary consumers exercising only a normal degree of care.
Moreover, it is settled that even sophisticated purchasers
who are knowledgeable as to the goods are not necessarily
immune to source confusion arising from the use of
confusingly similar marks on or in connection with the
goods. See Giersch v. Scripps Networks Inc., 90 USPQ2d
1020 (TTAB 2009); In re Wilson, 57 USPQ2d 1863 (TTAB 2001);
In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
For these reasons, we find that the fourth du Pont
factor weighs in favor of a finding of likelihood of
confusion; at best it is neutral in our analysis.
Under the sixth du Pont factor, we consider evidence
pertaining to the number and nature of similar marks in use
Ser. No. 77479384
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on similar goods. Applicant argues that registrant’s
MARTINI mark is weak and entitled to only a narrow scope of
protection because there are numerous third-party MARTINI
marks for clothing, such that purchasers are accustomed to
and able to distinguish source based on small differences
in the marks. In support of this argument, applicant has
submitted copies of third-party registrations of marks
which include the word MARTINI for clothing (Exh. J to
applicant’s request for reconsideration), a list of results
from a LEXIS/NEXIS search for registrations for clothing
which include the word MARTINI (Exh. I to applicant’s
request for reconsideration), and printouts from the
internet showing use of the marks MARTINI BIKINI for
swimwear and MARTINI for sunglasses (Exh. E to applicant’s
request for reconsideration).
We are not persuaded. Initially, we find that the
MARTINI is a highly distinctive and inherently strong mark
and that it therefore starts out with a wide scope of
protection in our analysis under the sixth du Pont factor.
We find that applicant’s evidence of third-party use does
not suffice to limit that scope of protection to any
significant degree.
First, it is settled that third-party registrations of
marks are not evidence that the registered marks are in
Ser. No. 77479384
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use, and that they therefore have no probative value under
the sixth du Pont factor as evidence of use of similar
marks on similar goods. See In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010); Olde Tyme
Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542,
1545 (Fed. Cir. 1992); Nike Inc. v. WNBA Enterprises LLC,
supra, 85 USPQ2d 1187, 1200-01 (TTAB 2007). See also 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition §11:89 (4th ed. 2009)(“The mere citation of
third party registrations is not proof of third party uses
for the purpose of showing a crowded field and relative
weakness.”) (Emphasis in original.) We also find that
these registrations are not probative evidence (akin to
dictionary evidence) which would show that the apparently
arbitrary term MARTINI in fact is descriptive or highly
suggestive of the goods themselves and thus entitled to a
more limited scope of protection. Compare, e.g., Knight
Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB
2005)(third-party registrations used like dictionary
evidence to support a finding that ESSENTIALS is highly
suggestive for clothing).
Second, the LEXIS/NEXIS search report for MARTINI
registrations is not acceptable evidence of the existence
of the registrations listed therein or of use of the
Ser. No. 77479384
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registered marks, for purposes of our analysis under the
sixth du Pont factor. See In re Hub Distributing, Inc.,
218 USPQ 284, 285 (TTAB 1983); In re Smith & Mehaffey,
supra, 31 USPQ2d 1531, 1532 n.3.
Finally, we find that the two other MARTINI marks
appearing on the internet, i.e., the mark MARTINI BIKINI
for swimwear and the mark MARTINI for sunglasses, do not
suffice, either in number or nature, to establish that use
of MARTINI marks for clothing is so widespread that
consumers are accustomed to or conditioned to distinguish
MARTINI marks based on small differences between the marks.
See Palm Bay Imports Inc., supra, 73 USPQ2d 1689, 1694.3
Weighing all of the evidence is it pertains to the
relevant du Pont factors, and for the reasons discussed
above, we conclude that a likelihood of confusion exists.
We have considered applicant’s arguments to the contrary

3 We note as an aside (but do not find or rely on) that it
appears from applicant’s LEXIS/NEXIS listing of MARTINI
registrations (listing no. 2) that the MARTINI BIKINI mark (which
is depicted on the website in essentially the same style of
lettering as the cited registered MARTINI mark in this case) is
registered (Reg. No. 3602484) by the owner of the cited
registration, i.e., Gary George Young. We note as well that
listing no. 3 on the LEXIS/NEXIS report shows that Mr. Young also
owns a registration (Reg. No. 3602297) of the mark MARTINI for
sunglasses. If our registrant in fact owns these MARTINI marks,
the probative value of applicant’s internet evidence as evidence
under the sixth du Pont factor of third-party MARTINI marks would
be even further diminished.

Ser. No. 77479384
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(including any arguments not specifically discussed in this
opinion), but are not persuaded by them.

Decision: The refusal to register is AFFIRMED.