L.C. Licensing, Inc. and Liz Claiborne, Inc.v.CMR Industria e Comercia Ltda.

Trademark Trial and Appeal Board

Jul 18, 2005

No. 91154354 (T.T.A.B. Jul. 18, 2005)

Mailed:
July 18, 2005

Grendel

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

L.C. Licensing, Inc. and Liz Claiborne, Inc.
v.
CMR Industria e Comercia Ltda.
_____

Opposition No. 91154354
to application Serial No. 76209351
filed on February 13, 2001
_____

David B. Kirchstein of Kirchstein, Ottinger, Israel &
Schiffmi for L.C. Licensing, Inc. and Liz Claiborne, Inc.

Bruce L. Adams of Adams & Wilks for CMR Industria e Comercia
Ltda.
______

Before Seeherman, Grendel and Kuhlke, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant, CMR Industria e Comercia Ltda., seeks
registration of the mark depicted below

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91154354
2
for goods identified in the application as “pantyhose,
lingerie, blouses and tops.”1 The application includes the
following “description of mark” statement supplied by
applicant at the Office’s request: “The mark consists of a
stylized depiction of the letters ‘LZ’.” (We shall have
more to say about this description, infra.)
Opposers L.C. Licensing, Inc. and Liz Claiborne, Inc.
have opposed registration of applicant’s mark, on the ground
that, as applied to applicant’s goods, the mark so resembles
various previously-registered “LIZ”-formative marks owned by
opposers 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 filed an answer by which it denied the
salient allegations of the notice of opposition.
The evidence of record includes the pleadings herein,
the file of the opposed application, and status and title
copies of eleven of opposers’ pleaded registrations, which
opposers submitted via notice of reliance. These
registrations, all of which are in full force and effect and
owned by opposer L.C. Licensing, Inc., are summarized as
follows:

1 Serial No. 76209351, filed February 13, 2001. The application
is an intent-to-use application under Trademark Act Section 1(b),
15 U.S.C. §1051(b).

Opposition No. 91154354
3
- Registration No. 1346383, which is of the
mark LIZWEAR (in standard character form) for
“clothing, namely, pants, shorts, skirts,
blouses, sweaters, shirts, t-shirts, jerseys and
jeans”;

- Registration No. 1531982, which is of the
mark LIZWEAR (in standard character form) for
“handbags,” and for “jeans and jean jackets,
tank tops, dresses, hats, shoes, boots and
sneakers”;

- Registration No. 1463605, which is of the
mark depicted below

for “pants, shorts, skirts, blouses, sweaters,
shirts, t-shirts, jerseys and jeans”;

- Registration No. 1371423, which is of the
mark LIZ SPORT (in standard character form;
SPORT disclaimed) for “pants, skirts, culottes,
one-piece suits, blouses, sweaters, t-shirts and
jackets”;

- Registration No. 1463606, which is of the
mark depicted below

for “pants, skirts, culottes, jumpsuits,
blouses, sweaters, t-shirts and jackets”;

- Registration No. 1534435, which is of the
mark LIZSPORT (in standard character form) for
“shorts, dresses and hats”;

- Registration No. 1602413, which is of the
mark LIZ & CO. (in standard character form; “&
CO.” disclaimed), for shirts, blouses, tank
Opposition No. 91154354
4
tops, pants, trousers, shorts, stirrup pants,
dresses, rompers, sweatshirts, skirts, jackets,
blazers, cardigans, vests, sweaters, jerseys, t-
shirts, jeans, jumpsuits”;

- Registration No. 2132747, which is of the
mark LIZGOLF (in standard character form) for
“shorts, skorts, pants, vests, jackets,
windshirts, tops, polo shorts [sic], t-shirts,
cardigans, jackets, sweaters, vests,
sweatshirts”;

- Registration No. 2469677, which is of the
mark depicted below

for “shorts, skorts, skirts, pants, vests,
jackets, windshirts, tops, t-shirts, cardigans,
sweaters, vests and sweatshirts”;

- Registration No. 2269882, which is of the
mark LIZWOOL (in standard character form) for
“coats”; and

- Registration No. 2377861, which is of the
mark LIZFLEX (in standard character form) for
“footwear of all kinds.”

Applicant, in support of its second affirmative defense
(i.e., that opposer’s LIZ marks are weak and entitled to a
narrow scope of protection), attached to its answer
printouts, from the Office’s database, of various third-
party “LIZ” registrations. Although applicant failed to
make these registrations of record at trial, opposer, in its
brief on the case, has treated them as if they were of
record. We therefore shall deem these registrations to have
Opposition No. 91154354
5
been stipulated into the record, and we shall discuss their
probative value, infra.
Because opposers have made their pleaded registrations
of record, and because their likelihood of confusion claim
is not frivolous, we find that opposer has established its
standing to oppose registration of applicant’s mark. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Additionally, because opposers have made their pleaded
registrations of record, Section 2(d) priority is not an
issue in this proceeding. See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Our likelihood of confusion determination under Section
2(d) 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 and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Opposition No. 91154354
6
We find that the goods identified in applicant’s
application are in part legally identical to, and otherwise
closely related to, the goods identified in opposer’s
various registrations. Given the absence of any
restrictions or limitations in the parties’ respective
identifications of goods, we also find that the parties’
respective goods would be marketed in the same trade
channels and to the same classes of purchasers. We also
find that the parties’ respective goods are ordinary
consumer items which would be purchased by ordinary
consumers who would not necessarily exercise a great deal of
care. Certainly pantyhose, one of the items identified in
applicant’s application, is an inexpensive item which could
be purchased on impulse. These findings under the second,
third and fourth du Pont factors all weigh significantly in
opposers’ favor in our likelihood of confusion analysis.
We turn next to the first du Pont factor, i.e., whether
applicant’s mark and opposers’ marks are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. 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
Opposition No. 91154354
7
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 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 National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Finally, in cases such as this, where the applicant’s goods
are (in part) identical to the opposer’s goods, the degree
of similarity between the marks which is required to support
a finding of likelihood of confusion is less than it would
be if the goods were not identical. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
We find that the commercial impression of applicant’s
mark is the word or name “LIZ.” This is so, notwithstanding
applicant’s “description of the mark” statement in the
application which asserts that applicant’s mark is a
stylized depiction of the letters “LZ.” The accuracy of
that statement is belied by the presence of the dot in the
Opposition No. 91154354
8
middle of the mark, which purchasers readily would assume to
belong to the letter “i”. Due to the presence of the dot
and the upturned letter “i” in the middle of applicant’s
mark, purchasers will view and understand applicant’s mark
not as the letters “LZ” but rather as the word or name “LIZ”
depicted in script form.
We also find that the dominant feature of opposers’
various marks (especially those marks which are depicted in
standard character form) is the name “LIZ.” The additional
literal elements of opposers’ marks are descriptive or
generic words such as “WEAR” and “SPORT”, attached as
suffixes to the name “LIZ.” Although several of opposers’
marks are depicted in stylized form, the degree of
stylization is not so pronounced as to detract from the
dominance of the name “LIZ” in each of the marks.
In terms of appearance, we find that applicant’s mark
is similar rather than dissimilar to each of opposers’
marks, especially those marks which are registered in
standard character form. Applicant’s mark is depicted in a
stylized script form, but opposer’s rights in its standard
character marks would entitle opposer to use its marks in a
similar script form. See Cunningham v. Laser Golf Corp.,
supra. Moreover, as discussed above, the dominant feature
of both applicant’s mark and opposers’ marks is the name
“LIZ.” It is that name, and not the stylization of the
Opposition No. 91154354
9
respective marks, which would be utilized by purchasers to
identify the source of the respective goods.
In terms of sound, we find that applicant’s mark is
similar to opposers’ marks to the extent that applicant’s
mark, and the first syllables of opposers’ marks, would be
pronounced as the name “LIZ.” The marks would not be
pronounced identically, due to the presence in opposers’
marks of the additional descriptive and generic wording.
However, the dominant features of both parties’ marks would
be pronounced identically, i.e., “LIZ.”
In terms of connotation and overall commercial
impression, the parties’ marks are similar rather than
dissimilar because they all would be understood to refer to
a person, “LIZ,” who is the designer and/or the source of
the goods sold under the marks.
As discussed above, the greater the degree of
similarity between the parties’ goods, the lesser the degree
of similarity between the respective marks that is required
to support a finding of likelihood of confusion. Given the
legally identical and otherwise similar nature of the
parties’ goods in this case, we find that their respective
marks are sufficiently similar that source confusion is
likely to result from contemporaneous use of the marks on
these goods.
Opposition No. 91154354
10
We turn finally to the third-party registrations of
“LIZ” marks made of record by applicant. We note that these
registrations are not probative evidence under the sixth du
Pont likelihood of confusion factor (“the number and nature
of similar marks in use on similar goods”), because they are
not evidence that the marks depicted therein are in use or
that they are familiar to purchasers. See Olde Tyme Foods
Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992).
In summary, we find that the evidence of record as it
pertains to the relevant du Pont factors clearly supports a
finding of likelihood of confusion, and that registration of
applicant’s mark therefore is barred under Trademark Act
Section 2(d).
Decision: The opposition is sustained.