L. C. Licensing, Inc.

Trademark Trial and Appeal Board

Sep 5, 2006

No. 76424233 (T.T.A.B. Sep. 5, 2006)

Mailed:
September 5, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re L.C. Licensing, Inc.
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Serial No. 76424233
_______

David B. Kirschstein of Kirschstein, Ottinger, Israel &
Schiffmiller, P.C. for L.C. Licensing, Inc.

Angela Micheli, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Bucher, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

L.C. Licensing, Inc. has appealed from the final
refusal of the trademark examining attorney to register

THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76424233
2
as a trademark for goods ultimately amended to “handbags,
wallets and leather key chains” in International Class 18.1
The application contains the following description of the
mark: “The mark consists of the word AXCESS in which the
letters ‘A’, ‘X’, ‘E’, ‘S’ and ‘S’ are written in white and
the letter ‘C’ is written in red and said letter ‘C’ is
underlined.”
The examining attorney has finally refused
registration pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the previously registered mark ACCESS (in typed
form) for “bags, travel bags, tote bags, duffle bags, belt
packs, waist packs, back packs, knap sacks, briefcases,
briefcase-type portfolios, luggage, suit cases, athletic
bags, gym bags, cosmetic bags, wallets, CD ROM carrying
bags and cases and floppy disc carrying bags and cases;
compact disc carrying bags and cases”2 in International
Class 18, that, as intended to be used on applicant’s
identified goods, applicant's mark is likely to cause
confusion or mistake or to deceive.

1 Application Serial No. 76424233, filed June 24 2002, claiming
an intent to use the mark in commerce under Trademark Act 1(b),
15 U.S.C. §1051(b).
2 Registration No. 2237228, issued April 6, 1999. Section 8 and
15 filings accepted and acknowledged.
Serial No. 76424233
3
Applicant has appealed the final refusal. Both
applicant and the examining attorney have filed briefs.
We affirm the Section 2(d) refusal of registration.
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). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We initially consider the similarities between
applicant’s and registrant’s goods as described in the
application and registration. Inasmuch as both applicant’s
and registrant’s identifications of goods include
“wallets,” applicant's and registrant’s goods are identical
in part. Also, applicant's “handbags” are encompassed
Serial No. 76424233
4
within registrant’s “bags,”3 and applicant's “key chains”
are otherwise related to opposer's bags and knap sacks
because they may be attached to such bags and knap sacks.
In view thereof, the first du Pont factor involving the
similarities of the goods weighs heavily in favor of
finding a likelihood of confusion.
We next consider the trade channels of applicant's and
registrant’s goods. Clearly, a determination of the issue
of likelihood of confusion between the applied-for and
registered marks must be made on the basis of the goods as
they are identified in the involved application and
registration. In such circumstances, if there are no
limitations in the identification, we must presume that the
“registration encompasses all goods of the nature and type
described, [and] that the identified goods move in all
channels of trade that would be normal for such goods.” In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Because the
goods are described broadly, and there are no trade channel
limitations included in the identifications of goods, we
must assume that the trade channels overlap. Moreover, we

3 The definition of “bag” from The American Heritage Dictionary
of the English Language (4th ed. 2000), of which we take judicial
notice, includes “1 … b A handbag; a purse.” See University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983) (the Board may take judicial notice of dictionary
definitions).
Serial No. 76424233
5
find that the goods identified in both the application and
the cited registration are ordinary consumer goods which
are subject to impulse purchases.
We next consider the similarities of the marks in
their entireties. Our focus is on whether the marks are
similar in sound, appearance, meaning, and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). We do not consider whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar that confusion as to the source of the goods
offered under the respective marks is likely to result.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
The marks involved in this appeal are identical in
sound and connotation. As applicant recognizes,
applicant's mark is a misspelling of the word “access,”
which is registrant’s mark. The “X” in applicant's mark is
likely to be pronounced the same as the first “C” in
ACCESS. Applicant has not argued that there is any
difference in pronunciation of the marks.
In terms of appearance, we find that the two marks are
highly similar. Applicant has merely taken registrant’s
Serial No. 76424233
6
mark and substituted the first “C” for an “X” and
underlined the second “C.”
Applicant maintains that the marks differ in
appearance not only because of the difference in the second
letters of each mark, but also because “the second ‘C’ is
written in red and underlined in red.” Brief at unnumbered
p. 4. Applicant's argument is of no consequence because
registrant’s mark is in typed form. As such, registrant is
not limited to presentation of its mark in any particular
color or stylization and may display its mark in various
colors, formats or fonts, in upper or lower case letters,
and may, in choosing a particular form of display, end up
with a mark very similar in appearance to applicant's mark,
including with the second “C” in red and the remaining
letters in white, depicted in lower case letters. See
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed.
Cir. 1983); 37 C.F.R. §2.52(a). See also Phillips
Petroleum Co. v. C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ
35 (CCPA 1971) (a mark in typed or standard character form
is not limited to the depiction thereof in any special
form). Further, the underlining in applicant's mark adds
little to the impression of applicant’s mark and hence does
not function to distinguish the marks in appearance or
commercial impression. Additionally, the minor differences
Serial No. 76424233
7
between applicant's marks and the cited mark are not likely
to be recalled by purchasers seeing the marks at separate
times. The recollection of the average purchaser is
normally a general rather than a specific impression of the
many trademarks encountered, and the purchaser's
fallibility of memory over a period of time must also be
kept in mind. See Grandpa Pidgeon's of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); In re
Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988);
Puma-Sportschuhfabriken Rudolf Dassler KG v. Roller Derby
Skate Corporation, 206 USPQ 255, 259 (TTAB 1980). Thus, we
reject applicant's argument and conclude that applicant’s
and registrant’s marks must be considered very similar in
their manner of display.4
As for commercial impression, we find that the
commercial impression of the marks is the same, in that
both marks are pronounced the same, and the lettering in
the marks only differs by applicant's substitution of one
“C” for an “X,” which has the same sound as the letter “C”
when spoken.

4 We reject applicant's argument too, made at unnumbered p. 2 of
its reply, that applicant's “design” is distinctive; that a
“consumer is more likely to remember the unique design” than the
word portion; and that the “design portion of applicant's mark is
at least as dominant as the word portion is.”
Serial No. 76424233
8
Thus, in view of the foregoing, we find that
applicant's mark and the cited mark are similar or even
identical in sound, appearance, connotation and commercial
impression.
One additional argument raised by applicant requires
comment. Applicant has provided for the first time during
the prosecution of its application a copy of three
registrations from the Office’s TESS database with its
appeal brief, one of which on its face shows that it has
been cancelled. According to applicant, “[t]he word
‘access’ has a suggestive connotation which undoubtedly
accounts for the co-existence of the four registrations …
none of which appear[s] to have been given very broad
scope”; and applicant’s mark should “coexist” with the
three registered marks and registrant’s mark in view of
these registrations. Brief at unnumbered p. 5. The
examining attorney has objected to the submission of the
TESS copies of the registrations. There are, however,
limited circumstances in which the Board will consider
registrations that have not properly been made of record.
In particular, if an applicant includes a listing of
registrations in a response to an Office action, without
also submitting actual copies of the registrations, and the
examining attorney does not object or otherwise advise the
Serial No. 76424233
9
applicant that a listing is insufficient to make the
registrations of record at a point when the applicant could
cure the insufficiency, the examining attorney will be
deemed to have waived any objection as to improper form.
See TBMP § 1207.03 (2d ed. rev. 2004) and cases cited
therein. Here, because the examining attorney did not
advise applicant that the listing of the same registrations
in its response to the initial Office action was
insufficient to make the registrations of record, the
examining attorney is deemed to have waived any objection
as to improper form, and we have considered the
registrations submitted with applicant's brief.
Nonetheless, because one registration shows that it has
been cancelled, and we have determined through the Office’s
electronic databases that a second registration has also
been cancelled, the remaining registration, even when
considered with registrant’s registration, does not
persuade us that “‘access’ has a suggestive connotation …
[and should not] be given [a] very broad scope.”
We conclude by holding that while there are some
differences in the marks, when applicant's mark and the
registered mark are used on related and/or identical goods,
and sold in the same trade channels to general consumers,
confusion is likely.
Serial No. 76424233
10
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act is affirmed.