Lerner New York, Inc.

Trademark Trial and Appeal Board

Aug 21, 1998

No. 74659196 (T.T.A.B. Aug. 21, 1998)

Hearing:
October 2, 1997
Paper No. 13
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 21,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
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In re Lerner New York, Inc.
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Serial No. 74/659,196
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Frank J. Colucci of Colucci & Umans for applicant.
Kim Saito, Trademark Examining Attorney, Law Office 109
(Deborah S. Cohn, Managing Attorney).
____________
Before Cissel, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Lerner New York, Inc. has filed a trademark application
to register the mark shown below for “denim clothing,
namely, shirts, shorts, pants, skirts.”1 The application

1 Serial No. 74/659,196, in International Class 25, filed April 11,
1995, based on an allegation of a bona fide intention to use the mark in
commerce.
Serial No. 74/659,196
2
includes a disclaimer of JEANS apart from the mark as a
whole.
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark NY, previously registered for “clothing,
namely, shirts and uniform jerseys,”2 that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.
Additionally, the Examining Attorney has finally
refused registration under Section 2(e)(2) of the Trademark
Act, 15 U.S.C. 1052(e)(2), on the ground that the term NY in
applicant’s mark is a known abbreviation for “New York”;
that the primary significance of the mark as a whole is
geographic; and that there is a strong goods/place
association between New York and the “garment industry.”
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs and an oral hearing was
held. We affirm the refusal to register on both grounds.
Before considering the merits of the refusals in this
case, we address the fact that applicant has submitted with
its brief information regarding third-party registrations;
and that the Examining Attorney has objected to this

2 Registration No. 1,898,998 issued June 13, 1995, to New York Yankees
partnership composed of Joseph A. Molloy, in International Class 25.
The registration includes a claim of acquired distinctiveness under
Section 2(f).
Serial No. 74/659,196
3
submission as untimely. We find the Examining Attorney’s
objection to be well taken and we have not considered this
evidence.3 Applicant did not comply with the established
rule that the evidentiary record in an application must be
complete prior to the filing of the notice of appeal. See,
37 CFR 2.142(d); In re Smith and Mehaffey, 31 USPQ2d 1531,
1532 (TTAB 1994).
Likelihood of Confusion
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
Considering, first, the goods, we agree with the
Examining Attorney that some of the applicant’s and
registrant’s goods are identical, i.e., applicant’s denim
shirts are encompassed by registrant’s shirts, and the
remaining identified goods of the parties are closely
related items of clothing. In fact, as the Examining
Attorney notes, “uniform jerseys,” as identified in the
registration, are a type of shirt, albeit for a specific
purpose.

3 We hasten to add that, had we considered this evidence, our decision
on the substantive issues in this case would remain the same.
Serial No. 74/659,196
4
It is immaterial that, as applicant argues, its goods
are sold only in its specialty stores and only with hang
tags identifying applicant as Lerner or Lerner New York; and
that registrant’s goods are “sporting goods or professional
sports team memorabilia or souvenirs” which would not be
sold in applicant’s stores. “The question of likelihood of
confusion must be determined based on an analysis of the
mark as applied to the goods and/or services recited in
applicant’s application vis-à-vis the goods and/or services
recited in [the] registration, rather than what the evidence
shows the goods and/or services to be.” Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815
(Fed. Cir. 1987).
While applicant’s identified clothing items are limited
to those made of denim, the applicant’s and registrant’s
goods are otherwise broadly worded and, except for
registrant’s “uniform jerseys” which are encompassed in its
identified “shirts,” the applicant’s and registrant’s goods
are not limited as to style or function. Therefore, we may
reasonably presume that the goods of the applicant and
registrant are sold in all of the normal channels of trade
to all of the normal purchasers for goods of the type
identified. See Canadian Imperial Bank v. Wells Fargo, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). That is, we may
presume that the goods of applicant and registrant are sold
Serial No. 74/659,196
5
through the same channels of trade to the same classes of
ordinary purchasers.
We begin our consideration of the marks by noting that
“when marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). In this case,
applicant’s mark encompasses registrant’s mark, NY, in its
entirety. The question is whether applicant’s mark,
considered in its entirety, is sufficiently different from
registrant’s mark to avoid a likelihood of confusion. We
answer this question in the negative. Applicant’s mark
consists of the term NY followed by the generic term JEANS,
in letters approximately half the size of NY. NY JEANS is
enclosed in a simple rectangle which serves merely as a
border. As such, the dominant portion of the mark is
clearly the term NY. Considering applicant’s mark in its
entirety, we conclude that there is sufficient similarity in
the commercial impressions of applicant’s mark, NY JEANS and
design, and registrant’s mark, NY, that their
contemporaneous use on the same and closely related goods
Serial No. 74/659,196
6
involved in this case is likely to cause confusion as to the
source or sponsorship of such goods.4
Geographic Descriptiveness
In order for registration to be properly refused under
Section 2(e)(2), it is necessary to show that (i) the mark
sought to be registered is the name of a place known
generally to the public, and that (ii) the public would make
a goods/place association, that is, believe that the goods
or services for which the mark is sought to be registered
originate in that place. See, e.g., University Book Store
v. University of Wisconsin Board of Regents, 33 USPQ2d 1385,
1402 (TTAB 1994);and In re California Pizza Kitchen, Inc.,
10 USPQ2d 1704 (TTAB 1988), citing In re Societa Generale
des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d
1450 (Fed. Cir. 1987).
If these conditions are met, and the goods come from
the place named by or in the mark, the mark is primarily
geographically descriptive. Moreover, where there is no
genuine issue that the geographical significance of a term
is its primary significance, and where the geographical
place named is neither obscure nor remote, a public
association of the goods with the place may ordinarily be

4 We find little merit to applicant’s argument that the connotation of
NY differs in the two marks. There is nothing in the nature of the
marks themselves which indicates different connotations of NY.
Applicant’s argument appears to presuppose that the applicant’s and
registrant’s goods are expressly limited, which they are not, in
Serial No. 74/659,196
7
presumed from the fact that the applicant’s goods come from
the geographical place named in the mark. See, e.g., In re
California Pizza Kitchen, Inc., supra; and In re Handler
Fenton Westerns, Inc., 214 USPQ 848, 850 (TTAB 1982).
The record establishes, and applicant does not dispute,
that NY is a known and common abbreviation for “New York.”
There is no question that New York is neither a remote nor
obscure geographic location. Rather, it is the name of a
place generally know to the public. Further, we conclude
that the additional term, JEANS, and the design added to
applicant’s mark do not detract from the primary geographic
significance of the composite mark. See, In re Chalk’s
International Airlines Inc., 21 USPQ2d 1637, 1639 (TTAB
1991). Moreover, as the Board has stated in the past, the
determination of registrability under what was then Section
2(e)(2) [and now is Section 2(e)(3)] should not depend on
whether the mark is unitary or a composite. See, In re
Cambridge Digital Systems, 1 USPQ2d 1659, 1662 (TTAB 1986).
Thus, the first prong of the test is met.
As indicated in the application, applicant is located
in New York and, as applicant states in its brief, its
stores are located nationwide, including, presumably, New
York. Thus, a principal origin of applicant’s goods is New
York, notwithstanding the fact that goods may be

registrant’s case to clothing related to the Yankees’ baseball team, and
Serial No. 74/659,196
8
manufactured, for example, in China or Mexico. Applicant’s
location and the circumstances surrounding the production
and marketing of the goods must be considered to determine
the origin of the goods as that is likely to be understood
by the consumer. In this case, it is reasonable to conclude
that applicant’s goods come from the place named in the
mark, i.e., New York. See, In re Nantucket Allserve Inc.,
28 USPQ2d 1144 (TTAB 1993). While as noted herein, we can
legally presume that a goods/place association exists, the
Examining Attorney has further justified this conclusion
with an excerpt from Webster’s New Geographical Dictionary
(1984), which indicates that apparel is among the principal
products of New York. Thus, in conclusion, we find that NY
JEANS and design is primarily geographically descriptive.

in applicant’s case to “hip,” “urban” clothing.
Serial No. 74/659,196
9
Decision: The refusal to register is affirmed as to
both Section 2(d) and Section 2(e)(2) of the Act.
R. F. Cissel
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board