Le Lido

Trademark Trial and Appeal Board

Nov 9, 2000

No. 74115369 (T.T.A.B. Nov. 9, 2000)

Paper No. 31
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Le Lido
________
Serial No. 74/115,369
_______
Martin E. Goldstein and Randi S. Miller of Darby & Darby
for applicant.
Jessie W. Billings, Trademark Examining Attorney, Law
Office 103 (Michael Szoke, Managing Attorney).
_______
Before Hanak, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Le Lido, a French
limited liability company, to register the mark shown below
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 74/115,369
2
for a wide variety of products falling into seven
international classes, namely class nos. 9, 14, 16, 18, 21,
25 and 33.1 With the exception of the listing of the
alcoholic beverages in class no. 33, every identification
of goods in the other classes concludes with the
terminology “all the aforementioned goods related to a
cabaret show.” According to applicant, the goods are
collateral to the nightclub cabaret show it produces under
the same mark.
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to applicant’s
goods, so resembles the previously registered mark LIDO for
“men’s, women’s and children’s clothing, namely T-shirts,
sweatshirts, pants and shorts” and “retail and discount
store services featuring men’s, women’s and children’s
clothing, gift items and stationery”2 as to be likely to

1 Application Serial No. 74/115,369, filed November 14, 1990,
alleging a claim of priority under Section 44(d) of the Trademark
Act based on French application Serial No. 210,761 filed on May
18, 1990. The application matured into French Registration No.
1602916. The application includes the following statements:
“The design element of the mark depicts a set of ostrich
feathers.”; and “An English translation of the mark is ‘Lido of
or from Paris.’” Applicant has disclaimed “de Paris” apart from
the mark.
2 Registration No. 1,538,205, issued May 9, 1989; combined
Sections 8 and 15 affidavit filed. The registration includes the
following statement: “The English translation of the word ‘Lido’
in the mark is ‘seashore, land or beach.’”
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3
cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs.3 An oral
hearing was not requested.
Applicant argues that the cited mark LIDO is weak and
is entitled to only a narrow scope of protection due to its
significance as a geographic term identifying a tourist
destination in Florida where registrant is located.
Applicant also asserts that the geographic designation “DE
PARIS” and the design feature in its mark serve to clearly
distinguish its mark from registrant’s mark. Applicant
further contends that the goods and services travel in
different channels of trade, pointing to the limitation set
forth in applicant’s identification of goods. Applicant
states that its mark “is used exclusively on items that are
intended to be sold in connection with a Parisian style
cabaret (musical review) that is performed either in a
permanent location or on tour at various locations
throughout the country” and that the goods “will be sold
only at the theaters or night clubs where the cabaret is
being performed or at shops that are adjacent to or in very
close proximity to those facilities.” The goods, according

3 The substitute appeal brief filed by applicant on February 10,
2000 is the operative brief for applicant.
Ser No. 74/115,369
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to applicant, “are collateral items that are sold for
promotional purposes and will not be marketed separately”
and, “[t]hus, the consumers who buy applicant’s goods will
be attending or at least [be] familiar with applicant’s
productions and will understand that the source of these
items is the production company.” (brief, p. 12)
The Examining Attorney maintains that applicant’s mark
is dominated by the term “LIDO” which is identical to the
cited mark. The Examining Attorney also contends that
applicant’s goods are related to registrant’s goods and
services, and that the channels of trade therefor are not
necessarily dissimilar because the identification of goods
and services in the cited registration does not include any
limitation.
Before turning to the merits of the likelihood of
confusion issue, we direct our attention to an evidentiary
matter. Earlier in the appeal, applicant filed a request
for remand and an appeal brief. By way of remand,
applicant sought to comply with a requirement pertaining to
the identification of goods, as well as to introduce
additional evidence. The Board, in an order dated December
29, 1999, granted the remand request only to the extent
that the Examining Attorney could consider the proposed
amendment to the identification of goods. The remand
Ser No. 74/115,369
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request with respect to the additional evidence was denied
in view of applicant’s failure to provide any reason why
the additional evidence could not have been made of record
prior to the filing of the notice of appeal. In the
Board’s order applicant also was advised that it would be
given the opportunity to file a substitute brief if it so
desired. Applicant later filed a substitute brief to which
it attached exhibits (exhibits A-G). Applicant has asked
that judicial notice be taken of this evidence. The
Examining Attorney, in her brief, has objected to the
submission as untimely, citing Trademark Rule 2.142(d) (but
see discussion, infra, regarding Exhibit F).
The evidence attached to the substitute appeal brief
comprises, by and large, the very same submission that the
Board previously found, in its order dated December 29,
1999, to be untimely. In view of this earlier order, the
Board is unpleasantly surprised by applicant’s counsel’s
second attempt to introduce the same evidence. Applicant’s
counsel should refrain from such practice in the future.
Some of the exhibits in question, in any event, hardly
present a case where judicial notice is proper.
Accordingly, exhibits B, D and E have not been considered.
Notwithstanding the Board’s annoyance at counsel’s behavior
on this particular point, exhibit A, a summary of the
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prosecution history, could have been included as part of
the brief and, therefore, the Board will consider it.
Exhibit C (a geographical dictionary listing) and Exhibit G
(a federal district court order involving third parties)
are proper subjects of judicial notice, and we have
considered them in reaching our decision. Exhibit F
comprises TRADEMARKSCAN copies of two registrations owned
by applicant.4 Although the Board does not take judicial
notice of registrations issued by the Office, the Examining
Attorney, in her brief, has treated these registrations as
if properly of record. Accordingly, we have considered the
registrations.
We now turn to the merits of the refusal. Our
determination under Section 2(d) is based on an analysis of
all of the facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or

4 Registration No. 741,072, issued November 20, 1962 (renewed),
for the mark LE LIDO for “organization and presentation of shows
for presentation in various places;” and Registration No.
779,078, issued October 27, 1964 (renewed), for the mark LE LIDO
for “printed display cards, menu cards, invitational cards,
magazines, newspapers, newsletters, house organs, posters and
programs.”
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services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976). At the outset, we
would point out that there is no per se rule governing
likelihood of confusion in cases involving clothing items,
but rather each case is to be determined on its own
particular facts and circumstances. See, e.g., In re
British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) and cases
cited therein.
With respect to the marks, we find that, when the
marks are considered in their entireties, the differences
outweigh the similarities. The addition in applicant’s
mark of the terminology “DE PARIS,” although geographically
descriptive, must be considered in comparing the marks in
their entireties. Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983). We find that this addition gives applicant’s mark
an overall commercial impression sufficiently different
from the term “LIDO” standing alone.5 Further, applicant’s
mark includes a prominent design feature which is
recognizable as the type of feather plume that is worn by
performers during a cabaret show. Although we view the

5 As noted earlier, the term “LIDO,” according the cited
registration, means “seashore, land or beach.” The term appears
in Merriam-Webster’s Geographical Dictionary (3rd ed. 1998) and is
identified as the island reef outside the Lagoon of Venice,
Italy.
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words in applicant’s mark as being the dominant portion,
the design nevertheless must be taken into account when the
marks are compared.
Insofar as applicant’s goods and registrant’s goods
and services are concerned, the fact that applicant has
restricted its goods (except for the alcoholic beverages
which obviously are not related to registrant’s goods or
services) to ones “related to a cabaret show” is of great
significance. Although, as the Examining Attorney points
out, registrant’s goods and services are not restricted
(that is, they will travel in all of the normal trade
channels for such goods and services), we do not believe
that the goods and retail store services of registrant must
be construed to include products related to a cabaret show.
We agree with applicant in this case that the restriction
in its identification of goods serves to avoid likelihood
of confusion. The restriction comports with applicant’s
remarks that its goods are collateral products to its
cabaret shows and that the goods are not marketed
separately, but rather in close connection with the shows
performed under the same or a similar mark. Applicant’s
goods, as restricted in the identification of goods, simply
are not the normal types of items encompassed within the
breadth of registrant’s identification of goods and
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services. This is one of those cases which involves
“particular facts and circumstances” where the restriction
in an applicant’s identification plays a significant role
in the likelihood of confusion analysis because the
restriction distinguishes the goods and/or services in a
meaningful way. See: In re The Shoe Works Inc., 6 USPQ2d
1890 (TTAB 1988).
Based on the relatively small record before us, we see
the Examining Attorney’s view of the likelihood of
confusion as amounting to only a speculative, theoretical
possibility, especially in view of the limitation in
applicant’s identification of goods. Language by our
primary reviewing court is helpful in resolving the
likelihood of confusion issue in this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception or mistake or with de minimis
situations but with the practicalities
of the commercial world, with which the
trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
citing Witco Chemical Co. v. Whitfield Chemical Co., Inc.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g
153 USPQ 412 (TTAB 1967).
In sum, in view of the cumulative differences between
the marks and between registrant’s goods and services and
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applicant’s goods which, in applicant’s case, are limited
to “goods related to a cabaret show,” we conclude that
consumers are unlikely to be confused as to the source of
the goods.
Decision: The refusal to register is reversed.
It is noted that the underlying French registration
was due to expire on May 18, 2000. The foreign
registration must be in force at the time the United States
issues the registration based on that foreign registration.
Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36, 41
(TTAB 1986). The Board has received a copy of the renewal
of the registration in France, and applicant’s counsel
indicates that it will provide a certified copy and an
English translation of the renewal in due course.
Accordingly, the application file is being forwarded to the
Examining Attorney to await receipt of proof of renewal of
the French registration. Trademark Manual of Examining
Procedure, §1004.03.
E. W. Hanak
T. J. Quinn
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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