Kemistre 8 LLC

Trademark Trial and Appeal Board

Mar 25, 2009

No. 78975095 (T.T.A.B. Mar. 25, 2009)

Mailed: 3/25/09

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kemistre 8 LLC
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Serial No. 78975095
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Joseph E. Sutton of Ezra Sutton, P.A. for Kemistre 8 LLC.

Giancarlo Castro, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
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Before Quinn, Kuhlke and Ritchie, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Kemistre 8 LLC filed an application to register the
mark JEANIUS LEVEL PRODUCTS (“PRODUCTS” disclaimed)
(standard character form) for
clothing and apparel for men, women,
young adults, children and infants,
namely shirts, embroidered shirts, tee
shirts, shorts, sport shirts,
sweatshirts, sweatpants, socks, vests,
belts, loungewear, sleepwear,
undergarments, underpants, undershirts,
bathrobes, footwear, underwear,
swimsuits, beach cover-ups, warm-up
suits, jackets, jerseys, tank tops,
sweaters, pants, jeans, vests, suits,
sport coats, coats, head bands,
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 78975095
2
overcoats, rain coats, top coats,
jackets, parkas, ties, bow ties,
neckwear, vests, scarves, bandannas,
pajamas, night shirts, suspenders,
gloves, headwear, hats, baseball caps,
embroidered caps, knitted hats,
footwear, shoes, slippers, boots,
sandals, sneakers, body suits,
jumpsuits; clothing for women and young
adults, namely, brassieres, bustiers,
camisoles, chemises, corselettes,
corsets, foundation garments, dressing
gowns, dusters, garter belts, girdles,
housecoats, lingerie, negligees, night
gowns, night shirts, pajamas,
peignoirs, robes, teddies, panties,
blouses, dresses, skirts, tops,
scarves, sarongs, halter tops, hosiery,
jumpers, shawls, stoles, scarves,
shrugs, boleros, and wraps; infant wear
(in International Class 25).1

The application includes a claim of ownership of
Registration No. 2695968 of the mark AKADEMIK JEANIUS for
the same clothing items as the ones listed in this
identification of goods.
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used in
connection with applicant’s goods, so resembles the

1 Application Serial No. 78975095, filed June 19, 2002, alleging
first use anywhere on August 1, 1999, and first use in commerce
on January 1, 2000. The original application Serial No. 78137152
included goods in both Classes 18 and 25. Pursuant to a request
to divide, the goods in Class 25 were divided out to create the
present “child” application. The “parent” application includes
the Class 18 goods; the application has since matured into
Registration No. 3520599.
Ser. No. 78975095
3
previously registered mark JEANIUS JEANS (“JEANS”
disclaimed) (typed form) for “men’s, women’s, children’s
jeans, shorts, skirts, shirts, pants and overalls” (in
International Class 25)2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that the marks “are sufficiently
dissimilar in sound, appearance and commercial impression.”
(Brief, p. 2). As to meaning, applicant contends that
applicant’s mark “implies products that are crafted
brilliantly, hence the term JEANIUS, which is a misspelling
of the word GENIUS,” whereas registrant’s mark “has no such
connotation; rather, it connotes or implies a hint towards
‘jeans’ being one of registrant’s key products.” Id.
Applicant also points to the absence of any actual
confusion despite the contemporaneous use of the marks for
over eight years. Applicant also relies on the existence
of its prior registration of the mark AKADEMIK JEANIUS;
according to applicant, because the Office determined that
this mark is distinguishable from the registered mark, its
present mark should also be found distinguishable from the
cited mark.

2 Registration No. 1896309, issued May 30, 1995; renewed.
Ser. No. 78975095
4
The examining attorney maintains that the marks are
similar in that both begin with the same term, “JEANIUS.”
The examining attorney further contends that consumers are
likely to remember this dominant term, rather than the
other portions of the marks, especially the disclaimed
words. As to the goods, the identifications of goods are
identical in part, or otherwise include closely related
clothing items. Lastly, the examining attorney is not
persuaded by the absence of actual confusion because the
record is devoid of evidence to gauge whether there has
been a meaningful opportunity for confusion to occur in the
marketplace.
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,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Ser. No. 78975095
5
With respect to the goods, applicant does not dispute,
with good reason, that the goods are similar. Indeed, the
respective identifications are identical to the extent that
both list the following goods: jeans, pants, shorts,
shirts and skirts. Further, most of applicant’s other
clothing items are closely related to registrant’s clothing
items. Because the goods are identical in part or
otherwise closely related, we presume that these clothing
items move through the same trade channels (e.g., clothing
stores and mass merchandisers such as Wal-Mart) to the same
purchasers, including ordinary consumers. See Kangol Ltd.
V. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945
(Fed. Cir. 1992). The identity in these du Pont factors
weighs heavily in favor of a finding of likelihood of
confusion.
As to conditions of sale, because the identifications
of goods do not include any limitations as to price, the
identifications encompass inexpensive clothing that
frequently would be the subject of an impulse purchase made
with nothing more than ordinary care. This factor also
weighs in favor of a finding of likelihood of confusion.
With respect to the marks, we must compare the marks
in their entireties as to appearance, sound, connotation
and commercial impression to determine the similarity or
Ser. No. 78975095
6
dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 services 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). Finally, where, as in the present case, the marks
are used in connection with identical goods (at least in
part), the degree of similarity between the marks that is
necessary to support a finding of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
In comparing applicant’s mark JEANIUS LEVEL PRODUCTS
to registrant’s mark JEANIUS JEANS, the marks obviously
share the term “JEANIUS.” It is well settled that one
feature of 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
Ser. No. 78975095
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the mark. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper
in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided
the ultimate conclusion rests on consideration of the marks
in their entireties. Indeed, this type of analysis appears
to be unavoidable.”) For example, merely descriptive
matter that is disclaimed is accorded subordinate status
relative to the more distinctive portions of a mark. In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997). Applicant has disclaimed the
generic term “PRODUCTS” while registrant has disclaimed the
generic term “JEANS.” Further, the term “LEVEL” in
applicant’s mark is not a significant addition, and it does
little to distinguish the marks. Moreover, the term
“JEANIUS” is the first term in each mark; clearly, this
identical first component of each mark is most likely to be
impressed upon the mind of a purchaser and will be
remembered and used when calling for the goods. See Presto
Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988). We find this is especially so in the
present case given the same misspelling, “JEANIUS,” of the
term “genius” in each mark.
Ser. No. 78975095
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In sum, the marks JEANIUS LEVEL PRODUCTS and JEANIUS
JEANS, when considered in their entireties, are similar in
sound and appearance. Further, the marks convey the same
meaning and overall commercial impression, namely that the
clothing items (especially the jeans or items made of
denim) are “brilliantly” designed and/or manufactured. The
similarity between the marks weighs in favor of a finding
of likelihood of confusion.
Applicant also points to the absence of any evidence
of actual confusion despite over eight years of
contemporaneous use of the marks. Firstly, we agree with
the examining attorney that the record does not include any
evidence pertaining to the nature and extent of use of the
respective marks. Thus, it may be that there has been
little to no opportunity for confusion to occur in the
marketplace. Secondly, applicant’s uncorroborated
statement of no known instances of actual confusion is of
little evidentiary value. In re Majestic Drilling Co., 65
USPQ2d at 1205. The lack of evidence of actual confusion
carries little weight, especially in an ex parte context.
Id. This factor is neutral in our analysis.
The existence of applicant’s registration of the mark
AKADEMIK JEANIUS for clothing does not compel a different
result in this appeal. Applicant’s two marks clearly are
Ser. No. 78975095
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different and, as often stated, each case must be decided
on its own merits. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
We conclude that consumers familiar with registrant’s
clothing items sold under the mark JEANIUS JEANS would be
likely to believe, upon encountering applicant’s mark
JEANIUS LEVEL PRODUCTS for identical or closely related
clothing items, that the goods originate from or are
associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.