LTJ Diffusion

Trademark Trial and Appeal Board

Jun 13, 2002

No. 75288084 (T.T.A.B. Jun. 13, 2002)

6/13/02 Paper No. 24
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re LTJ DIFFUSION
________

Serial No. 75/288,084
_______

Anthony Mercaldi and Lori M. Stockton of Blakely Sokoloff Taylor
& Zafman for LTJ DIFFUSION.

Mary Rossman, Trademark Examining Attorney, Law Office 109
(Ronald Sussman, Managing Attorney).
_______

Before Quinn, Hohein and Hairston, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

LTJ DIFFUSION has filed an application to register the
mark "ARTHUR" and design, as reproduced below,

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/288,084
2
for "clothing for men, women and children, namely, T-shirts,
panties, long johns, bathing suits, underpants, shorts, socks,
sweatshirts, sweatpants, sweat shorts, sweat suits, pajamas,
sleep suits, bathrobes, dressing gowns, night-gowns, night
shirts, night-dresses, overalls, jackets, over garments, namely,
raincoats and overcoats; brassieres, shirts, old style shirts,
robes, pyjashorts, track suits, slippers; underwear for babies."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when used in connection with its goods,
so resembles the mark "ARTHUR," which is registered by the same
registrant for (i) "clothing, namely, plush slippers; knit
slipper socks; vinyl and/or patent leather dress shoes; suede,
ultrasuede, leather-like and/or canvas casual shoes; vinyl
rainboots; lace-up hiking boots with rubber soles; vinyl and/or
plastic sandals; cotton knit socks (adult and children);
embroidered woven cotton baseball caps; silk-screened printed
tee shirts (adult and children); pajamas, footed pajamas"2 and

1 Ser. No. 75/288,084, filed on May 7, 1997, which is based on both an
allegation of a bona fide intention to use such mark in commerce and
ownership of French Reg. No. 17731, issued as of June 16, 1983 with
renewal expiring as of June 16, 2003.

2 Reg. No. 2,151,491, issued on April 14, 1998, which sets forth a date
of first use anywhere and first use in commerce of May 1, 1997.

Ser. No. 75/288,084
3
(ii) "clothing, namely, sweatshirts (adult and children),"3 as to
be likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). However, as
indicated in Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any likelihood of
confusion analysis, two key considerations are the similarity of
the goods and the similarity of the marks.4
Turning first to consideration of the respective
goods, applicant maintains in its initial brief that the
channels of trade for such goods differ so significantly that
there is no likelihood of confusion. Specifically, applicant
asserts that, "in light of the fact that goods bearing the
Registrant's mark will be promoted in association with the
cartoon character, ARTHUR THE AARDVARK, goods bearing the

3 Reg. No. 2,168,166, issued on June 23, 1998, which sets forth a date
of first use anywhere and first use in commerce of August 1998.

Ser. No. 75/288,084
4
Registrant's mark are [thus going to be] marketed towards
children that are fans of the Registrant's cartoon character,
ARTHUR THE AARDVARK, such that the respective channels of trade
of goods bearing the respective marks should not be considered
to be related, and therefore, consumers are not likely to
confuse the marks as to source, affiliation or sponsorship."
Applicant, in this regard, contends that "the evidence
of record establishes a clear connection between the
Registrant's ARTHUR mark, and the cartoon character, ARTHUR THE
AARDVARK," inasmuch as registrant is shown to be the originator
and author/illustrator of such. In particular, applicant notes
that it has "submitted credible and uncontradicted evidence that
the Registrant's mark is recognized, marketed and promoted in
connection with the cartoon character, ARTHUR THE AARDVARK,"
including copies of "the ARTHUR THE AARDVARK cartoon character
web page (excerpted from www.pbs.org), ... an on-line reference
to the Registrant's shirt sales" and copies of companion
registrations by registrant for the mark "ARTHUR" in which the
goods are identified as "children's storybooks about an
aardvark" and "computer software on CD ROMS and audio tapes
featuring children's stories about an aardvark."

4 The court, in particular, pointed out that: "The 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."
Ser. No. 75/288,084
5
The issue of likelihood of confusion is determined,
however, on the basis of the goods as identified in the
respective application and cited registration(s), regardless of
what the record may reveal as to the particular nature of those
goods, their actual channels of trade, or the class of
purchasers to which they are in fact directed and sold. See,
e.g., Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); and
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987). That is
to say, it is well settled in this regard that absent any
specific limitations or restrictions in the identifications of
goods as listed in the applicant's application and the
registrant's registration(s), the issue of likelihood of
confusion must be determined in light of consideration of all
normal and usual channels of trade and methods of distribution
for the respective goods and on the basis of all customary
consumers therefor. See, e.g., CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and
Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Here, the Examining Attorney correctly points out in
her brief that, as identified in the application and cited
Ser. No. 75/288,084
6
registrations, the "respective goods are closely related,
complementary and in some instances identical," with the latter
encompassing T-shirts (or tee shirts), socks, sweatshirts,
pajamas (or pyjashorts) and slippers. Moreover, the Examining
Attorney properly observes that "[t]he identifications of goods
in the cited registrations include none of the limitations that
applicant posits -- the goods are not limited to children's
clothing ..., there is no limitation indicating that the goods
depict an aardvark character, there is no limitation as to whom
the goods may be marketed, and there is no limitation that the
channels of trade be associated with an aardvark character." In
consequence thereof, the goods at issue would not only be
marketed to the same classes of purchasers, including adults as
well as children, but as the Examining Attorney persuasively
indicates:
As to marketing and channels of trade,
it is well-known that after listening to
children's requests, parents, grandparents
and other relatives and family friends
frequently look for and purchase items of
clothing for children. .... Just as adults
shopping for children in department,
discount and specialty stores find Mickey,
Daffy and Pooh clothing sold in the same
sections and on the same racks ...[or]
shelves as other brands, they may look for
and find registrant's and applicant's
clothing in the same sections and on the
same racks and shelves.

Ser. No. 75/288,084
7
Accordingly, because both applicant's goods and those
of registrant are identified, without limitation or restriction,
as various items of "clothing" for adults and children, they
must be presumed to encompasses all types of the specified
apparel and to be suitable for sale through all normal and usual
trade channels and distribution methods therefor.5 See, e.g., In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In so basing our
approach to the issue of whether there is a likelihood of
confusion on consideration of the entire marketplace for the
respective goods, we note that as stated in Canadian Imperial
Bank of Commerce, N.A. v. Wells Fargo Bank, supra at 1 USPQ2d
1816, such "is precisely the approach" which is required and
that "nothing in du Pont ... is inconsistent with it."
Consequently, inasmuch as the respective goods must be treated
as legally identical, complementary and otherwise closely
related articles of clothing which would be offered through the
identical or substantially similar channels of trade to the same
classes of consumers, it is clear that if such goods were to be

5 Given the identity in the trade channels and distribution methods for
the goods at issue herein, the request in applicant's initial brief
that "the Board ... consider In re Shipp, 4 USPQ2d 1174 (TTAB 1987)[,]
wherein the Board determined that [due to differences in the channels
of trade and classes of purchasers the mark] PURITAN was not likely to
cause confusion for dry cleaning and laundry services with the
identical word mark and word and design mark for a variety of dry
cleaning and cleaning preparations" is inapposite.

Ser. No. 75/288,084
8
marketed under the same or similar marks, confusion as to the
source or sponsorship thereof would be likely to occur.
Turning, therefore, to consideration of the respective
marks, applicant raises two primary arguments. First, applicant
asserts that "the Registrant's mark is diluted and weak, and
therefore, not worthy of a broad scope of protection." Second,
applicant maintains that, "given the manner in which the
Registrant's mark will be associated with the cartoon character,
ARTHUR THE AARDVARK, consumers would not likely perceive the
Applicant's stylized depiction of the ARTHUR mark and the
Registrant's mark as having confusingly similar commercial
impressions."
In support of its first argument, applicant has made
of record copies of several "third-party registrations wherein
the term ARTHUR appears as part of a registered trademark in
connection with goods in the field of apparel." Such
registrations include the marks: "ARTHUR MAX" (in a script
design) for "tops, skirts, dresses, jumpsuits and jackets";6
"AWFUL ARTHUR'S" and design for "headwear and shirts"; "ARTHUR
ET FELICIE" for "wearing apparel for women and children, namely,
shirts, pants, sweaters, socks, jackets, dresses, coats, hats,
scarves, gloves, underwear, shoes and slippers"; "EVELYN &
Ser. No. 75/288,084
9
ARTHUR" for "clothing, namely--dresses, suits, skirts, blazers,
shirts, blouses, camisoles, sweaters, slacks, jeans, overalls,
sweatpants, sweatshirts, shorts, culottes, swimwear, bathing
suits, bathrobes, tennis wear, belts, caftans, capes, rain
coats, stockings, socks, footwear, caps, hats and headbands";
"ARTHUR WINER" for "clothing for men and women, namely, pants,
shirts, blouses, jackets, dresses, skirts and vests"; and
"ROBERT ARTHUR" (in a script design) for "women's clothing--
namely, jackets, skirts, slacks, blouses, sweaters and dresses."7
While acknowledging that "third-party registrations are not
dispositive in any given case," applicant insists that "the
above registrations containing the term ARTHUR for use upon
clothing present a convincing picture of the extent to which the
[cited] Registrant's mark is entitled to [but] a limited scope
of protection when used in connection with apparel."
However, as the Examining Attorney correctly points
out in her brief, "[t]hird-party registrations are not evidence
of what happens in the marketplace or that the public is
familiar with the use of those marks." See, e.g., National

6 Such registration, although initially cited by the Examining Attorney
as an additional bar to registration by applicant of its mark, was
subsequently withdrawn as a bar under Section 2(d) of the statute.
7 In addition, applicant made of record a copy of a third-party
registration for the mark "ARTHUR'S TROUSERS" (with the word
"TROUSERS" disclaimed) for "trousers." Although such registration,
unlike the ones above, has expired for failure to file a renewal,
applicant maintains that the registration was still subsisting at the
time the two registrations cited herein issued.
Ser. No. 75/288,084
10
Aeronautics & Space Administration v. Record Chemical Co., 185
USPQ 563, 567 (TTAB 1975). Such registrations, she further
properly notes, "are not evidence to show that the marks are
actually being used, or that the extent of third party use is so
great that customers have become accustomed to seeing these
marks and hence have learned to distinguish them." See, e.g.,
Smith Brothers Manufacturing Co. v. Stone Manufacturing Co., 476
F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); and In re Hub
Distributing, Inc., 218 USPQ 284, 285-86 (TTAB 1983).
Consequently, and as likewise indicated in AMF Incorporated v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268,
269 (CCPA 1973), the co-existence of the third-party
registrations with the cited registrations does not justify
registration of yet another confusing mark inasmuch as:
[L]ittle weight is to be given such
registrations in evaluating whether there is
likelihood of confusion. The existence of
these registration is not evidence of what
happens in the market place or that
customers are familiar with them nor should
the existence on the register of confusingly
similar marks aid an applicant to register
another likely to cause confusion, mistake
or to deceive.

Moreover, to the extent that applicant may also mean
to utilize the copies of the third-party registrations in a
manner analogous to a dictionary or other standardized reference

Ser. No. 75/288,084
11
work, so as to show that the term "ARTHUR" has both a given name
and a surname significance and thus has been adopted by various
third parties as part of their marks for that reason (i.e., as
the given name or surname of real or fictitious fashion
designers or other individuals), it is obvious that the marks at
issue herein consist of the term "ARTHUR" without any other
significantly distinguishing element(s). While we note that
applicant's stylized "ARTHUR" mark includes a small dot or ink
spot in addition to the script presentation of the letters
comprising such term, the dot or spot is simply too insufficient
an element to differentiate applicant's mark from the cited
registrant's "ARTHUR" mark. This is because the latter, being
in typed form, encompasses the display of the term "ARTHUR in
any reasonable manner, including the same stylized script
lettering as utilized by applicant in its "ARTHUR" and design
mark. See, e.g., Phillips Petroleum Co. v. C. J. Webb, Inc.,
442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) and INB National Bank
v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992).
Accordingly, not only are the marks at issue identical in sound
and connotation, but they must also be regarded as virtually
identical in appearance. Consequently, when considered in their
entireties, applicant's "ARTHUR" and design mark and the cited
registrant's "ARTHUR" mark project essentially the same
commercial impression.
Ser. No. 75/288,084
12
Applicant, however, takes issue with such conclusion,
raising as its remaining primary argument that the overall
commercial impression engendered by each of the marks at issue
is not likely to be "confusingly similar" because, as stated
previously, "the Registrant's mark will be associated with the
cartoon character, ARTHUR THE AARDVARK ...." While we disagree
with the Examining Attorney's contention that applicant's
attempt to limit or restrict the scope of protection of
registrant's mark in such a manner "constitute[s] a collateral
attack on a cited registration" and hence is impermissible,
suffice it to say that the issue of likelihood of confusion,
insofar as the registrability of applicant's mark is concerned,
is determined on the basis of such mark and registrant's mark as
they are respectively set forth in the application and cited
registrations. This is because Section 2(d) of the Trademark
Act precludes registration of "a mark which so resembles a mark
registered in the Patent and Trademark Office ... as to be
likely ... to cause confusion ...." Thus, the fact that
registrant presently uses its "ARTHUR" mark on its website and,
presumably, on labels or packaging for its apparel, with such
additional matter as its "ARTHUR THE AARDVARK" cartoon character
is irrelevant and immaterial to the issue of likelihood of
confusion. See, e.g., Sealy, Inc. v. Simmons Co., 265 F.2d 934,
121 USPQ 456, 459 (CCPA 1959); Burton-Dixie Corp. v. Restonic
Ser. No. 75/288,084
13
Corp., 234 F.2d 668, 110 USPQ 272, 273-74 (CCPA 1956); Hat Corp.
of America v. John B. Stetson Co., 223 F.2d 485, 106 USPQ 200,
203 (CCPA 1955); and ITT Canteen Corp. v. Haven Homes Inc., 174
USPQ 539, 540 (TTAB 1972).
Accordingly, we conclude that purchasers and potential
customers, who are familiar or acquainted with registrant's
"ARTHUR" mark for its various items of clothing, would be likely
to believe, upon encountering applicant's virtually identical
"ARTHUR" and design mark for its articles of clothing, that such
in part legally identical, complementary and otherwise closely
related items and articles of apparel emanate from, or are
sponsored by or associated with, the same source.
Decision: The refusal under Section 2(d) is affirmed.