Lange Uhren GmbH

Trademark Trial and Appeal Board

Oct 27, 1999

No. 75296012 (T.T.A.B. Oct. 27, 1999)

Hearing: Paper No. 9
May 25, 1999 EWH/MM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 10/27/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Lange Uhren GmbH
________
Serial No. 75/296,012
_______
Eric P. Schellin of Schellin & Associates Ltd. for Lange
Uhren GmbH.
Shanna Blaustein, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Hanak and Bottorff, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Lange Uhren GmbH (applicant) seeks to register CABARET
in typed drawing form for “timekeeping instruments, namely,
clocks, watches, stopwatches, clock parts, including clock
mechanisms and clock housings; watch bands.” The intent-
to-use application was filed on May 22, 1997.
The Examining Attorney refused registration pursuant
to Section 2(d) of the Trademark Act on the basis that
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2
applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the mark CABARET, previously
registered in the form shown below for “retail store
services rendered in connection with women’s clothing,
handbags, jewelry and accessories.” Registration number
1,454,734.
In any likelihood of confusion analysis, two key
considerations are the similarity of the marks and the
similarity of the goods or services. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by Section
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3
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [or services] and
differences in the marks.”).
Considering first the marks, we note that they are
identical in terms of pronunciation and meaning. Moreover,
because applicant seeks to register CABARET in typed
drawing form, this means that applicant, should it obtain a
registration, would be free to depict CABARET in a
combination of upper and lower case letters such that it
could be visually similar to registrant’s stylized CABARET
mark. In short, because the two marks are identical in
terms of pronunciation and meaning, and because there is
the possibility that they could be quite similar in terms
of visual appearance, we find that, overall, the two marks
are nearly identical. In this regard, we note that in its
brief, applicant never even discusses any dissimilarities
in the marks. Applicant merely acknowledges the obvious,
namely, that “the mark in both instances is a well known
word having a dictionary meaning of ‘a large restaurant’ in
many languages.” (Applicant’s brief page 1).
The fact that the marks are nearly identical “weighs
heavily against applicant.” In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
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4
1984). Indeed, the fact that an applicant has selected the
nearly identical mark of a registrant “weighs [so] heavily
against the applicant” that applicant’s proposed use of the
mark on “goods … [which] are not competitive or
intrinsically related [to registrant’s services] … can
[still] lead to the assumption that there is a common
source.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688-89 (Fed. Cir. 1993).
Applicant’s goods include watches. Registrant’s
retail store services include women’s jewelry. The
Examining Attorney has made of record substantial evidence
from the NEXIS database showing that it is a common
practice for jewelry stores to sell watches. Indeed, even
applicant has conceded “that some jewelry stores carry
watches.” (Applicant’s brief page 2).
Thus, we find that there is a clear relationship
between at least certain of registrant’s services (retail
store services featuring women’s jewelry) and certain of
applicant’s goods (watches). Because there is a definite
relationship between registrant’s services and applicant’s
goods, and because the two marks are nearly identical, we
Ser No. 75/296,012
5
find that there exists a likelihood of confusion.
Decision: The refusal to register is affirmed.
E. J. Seeherman
E. W. Hanak
C. M. Bottorff
Administrative Trademark
Judges, Trademark Trial
and Appeal Board