Kohl’s Illinois, Inc.

Trademark Trial and Appeal Board

Feb 26, 2004

No. 76149873 (T.T.A.B. Feb. 26, 2004)

Mailed: February 26, 2004
Hearing: Paper No. 15
November 5, 2003 PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kohl’s Illinois, Inc.
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Serial No. 76149873
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Norman H. Zivin and Donna A. Tobin of Cooper & Dunham LLP
for Kohl’s Illinois, Inc.
Nicholas K. D. Altree, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
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Before Cissel, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Kohl’s Illinois, Inc. has filed an application to
register the mark BABY AND ME for “women’s maternity
clothing, namely woven tops, denim pants, knit tops, pill
pants, sleep wear, pant sets, dresses, jumpers, knit pants
and shorts.”1
1 Application Serial No. 76149873, filed October 20, 2000, which
alleges dates of first use of June 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76149873
2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), in view of the previously registered marks
BABY ‘N ME for “intimate apparel, namely, nursing bras and
maternity foundation garments; namely stockings, panties,
slips and petticoats;”2 and BABY ‘N’ ME for “bib for nursing
mothers to use when discreet breastfeeding is desired.”3
The registrations are owned by the same entity.
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs, and
both appeared at an oral hearing before this panel.
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. With regard to the
marks4, applicant argues that they differ in commercial
impression because:
Applicant’s mark calls to mind the well known
rhyme “Pat-a-cake,” which ends with the phrase
“put it in the oven for BABY AND ME.” In
contrast, cited registrant’s BABY ‘N ME
2 Registration No. 1,799,451 issued October 19, 1993; Section 8
affidavit accepted; renewed.
3 Registration No. 1,369,148 issued November 1985; Sections 8 and
15 affidavits accepted and acknowledged, respectively. The word
“BABY” is disclaimed apart from the mark as shown.
4 We note that applicant and the Examining Attorney have referred
to registrant’s marks BABY ‘N ME and BABY ‘N’ ME as a single
mark, BABY ‘N ME. In view thereof, and because the difference in
the marks is so slight, we have done the same.
Ser No. 76149873
3
is more intimate and conveys a play on
words in connection with maternity underwear
as it can be interpreted as “baby in me.”
We are not persuaded by applicant’s argument. There
is no evidence to support applicant’s contention that its
mark BABY AND ME will call to mind the “Pat-a-cake” nursery
rhyme.5 Moreover, with respect to registrant’s mark BABY ‘N
ME, purchasers are just as likely to “interpret” this mark
as “baby and me.” We judicially notice that the Dictionary
of Slang (1999) at page 822 lists “‘n’: abbr. of standard
English and, e.g., rock ‘n’ roll.” In any event, even
assuming that the marks differ in connotation, applicant’s
mark BABY AND ME is still substantially similar to
registrant’s mark BABY ‘N ME in sound, appearance and
overall commercial impression. As is apparent, both marks
begin and end with the same words “BABY” and “ME.”
Further, the “AND” and “’N” portions of the marks are very
similar in sound and appearance. In sum, we find that the
marks are substantially similar in sound, appearance,
meaning and commercial impression.
5 Applicant, for the first time with its brief on the case,
submitted a copy of the “Pat-a-cake” nursery rhyme. As noted by
the Examining Attorney, Trademark Rule 2.142(d) provides that the
record in the application should be complete prior to the filing
of an appeal and that the Board will ordinarily not consider
evidence submitted after the appeal is filed. Thus, we have not
considered applicant’s submission in reaching our decision.
Ser No. 76149873
4
We turn next to a consideration of the goods in
applicant’s application (women’s maternity clothing, namely
woven tops, denim pants, knit tops, pill pants, sleep wear,
pant sets, dresses, jumpers, knit pants and shorts) and the
goods in the cited registrations (intimate apparel, namely,
nursing bras and maternity foundation garments, namely,
stockings, panties, slips and petticoats; and a bib for
nursing). Applicant argues that there is a “competitive
distance” between the respective goods and that they are
sold in different sections of department stores.
At the outset, it should be noted that it is not
necessary that the goods be identical or even competitive
in nature in order to support a finding of likelihood of
confusion. It is sufficient that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
used in connection therewith, to the mistaken belief that
the goods originate from or are in some way associated with
the same source. In re International Telephone and
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Further, in comparing goods in these types of cases,
relatedness of the goods must be determined on the basis of
the goods as they are identified in the involved
Ser No. 76149873
5
application and registrations. In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). And, we must assume, in the absence of
any specific limitations in the application and
registrations, that the goods identified therein travel in
all the normal channels of trade for such goods to the
usual class of purchasers.
We find that applicant’s women’s maternity clothing is
sufficiently related to registrant’s nursing bras,
maternity foundation garments, and a bib for nursing that
when sold under the applied-for mark, confusion is likely
to occur among consumers. Clearly, applicant’s women’s
maternity clothing and registrant’s nursing bras, maternity
foundation garments, and bib for nursing are complementary
goods which would be sold to the same class of consumers,
namely pregnant women. Further, the respective goods would
be sold in the same channels of trade, namely stores
specializing in maternity wear, department stores, and mass
merchandisers, and may even be purchased during the same
shopping trip.
Although applicant argues that registrant’s goods are
of a type that are usually sold with assistance from a
knowledgeable sales person, applicant offered no support
for this contention and there is nothing inherent in the
nature of nursing bras, bibs for nursing, and maternity
Ser No. 76149873
6
foundation garments that would lead us to this conclusion.
Rather, both applicant’s and registrant’s goods would be
sold to ordinary consumers who exercise nothing more than
reasonable care in their selection and purchase of
clothing.
With respect to the relatedness of the goods involved
herein, the Examining Attorney submitted copies of thirteen
use-based third-party registrations for marks which, in
each instance, are registered for various maternity
clothing items, on the one hand and maternity foundation
garments, nursing bras and/or bibs, on the other.
Although not conclusive, this evidence serves to suggest
that the goods listed therein are of a type which may
emanate from a single source under a single mark. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB
1988).
Finally, applicant argues that registrant’s mark BABY
‘N ME is weak and should only be granted a limited scope of
protection. Applicant has submitted copies of six third-
party registrations for marks consisting of “BABY AND (N)
ME.” The probative value of this evidence is very limited
in our determination of the specific issue of likelihood of
confusion in this case. There is no evidence that the
Ser No. 76149873
7
marks listed therein are in use or that purchasers are
familiar with them. In addition, all of the registrations
are for goods/services far removed from maternity clothing.
In any event, even weak marks are entitled to protection
where confusion is likely, and here applicant’s mark BABY
AND ME is substantially similar in sound, appearance,
connotation and commercial impression to registrant’s mark
BABY ‘N ME.
We conclude that consumers familiar with registrant’s
maternity clothing offered under its mark BABY AND ME would
be likely to believe, upon encountering applicant’s
substantially similar mark BABY ‘N ME for nursing bras,
maternity foundation garments, and a bib for nursing, that
such closely related goods originated with or are somehow
associated with the same entity.
Decision: The refusals to register under Section 2(d)
of the Trademark Act in view of Registration Nos. 1,799,451
and 1,369,148 are affirmed.