Mark C. Andrews

Trademark Trial and Appeal Board

Jul 23, 2002

No. 75781752 (T.T.A.B. Jul. 23, 2002)

This Opinion
is Not Citable as
Precedent of the TTAB

7/23/02
Paper No. 13
GFR

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mark C. Andrews
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Serial No. 75/781,752
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Douglas J. McEvoy of Gifford, Krass, Groh, Sprinkle,
Anderson & Citkowski, P.C. for Mark C. Andrews.

Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______

Before Simms, Hohein and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Mark C. Andrews has filed an application to register
the mark shown below in International Class 25 for goods
identified as "wearing apparel, namely, T-shirts, pants,
shirts, hats, caps, coats, vests, socks and shoes."1

1 Serial No. 75/781,752, filed August 20, 1999, based on
applicant's allegation of a bona fide intention to use the mark
in commerce.
Ser. No. 75/781,752
2

The application includes a disclaimer of OUTWEAR. The
design element, which may not be particularly clear in the
reproduction above, is an illustration of a pine tree.
The examining attorney has refused registration of
applicant's mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), because of the prior registration,
also in Class 25, of the mark NORTHERN APPAREL for goods
identified as “men’s, women’s and children’s clothing,
namely, outerwear, coats, jackets, anoraks, suits, blazers,
sport jackets.”2 The registration includes a disclaimer of
APPAREL.
When the examining attorney made the refusal of
registration final, applicant appealed. Both applicant and
the examining attorney have filed briefs, but an oral
argument was not requested. We affirm the refusal.

2 Registration No. 2,403,327, issued November 14, 2000, based on
an application filed December 8, 1998, and lists a date of first
use and first use in commerce of September 30, 1996.

Ser. No. 75/781,752
3
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In the
analysis of likelihood of confusion presented by this case,
key considerations are the similarities of the marks, the
overlap in the goods, i.e., both identifications list
“coats,” and the relatedness of the remaining items.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
The NORTHERN APPAREL mark is registered in typed form.
Thus, we must allow for the possibility that registrant
could display its mark in any reasonable manner or form of
lettering, including the typeface employed by applicant.
See Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d
1376, 170 USPQ 35, 36 (CCPA 1971); Jockey International
Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1235 (TTAB
1992); and INB National Bank v. Metrohost Inc., 22 USPQ2d
1585, 1588 (TTAB 1992). Applicant argues that the design
element that is included in his mark “adds a very
distinctive and unique flavor.” Applicant likens the
significance of the design element in his mark to the
significance of the portrait of Ernest Hemingway included
Ser. No. 75/781,752
4
in the mark at issue in In re Sloppy Joe’s International
Inc., 43 USPQ2d 1350 (TTAB 1997). We agree with the
examining attorney, however, that the circumstances of that
case are distinguishable. There the design was large and a
prominent element of the mark; and the notoriety of Ernest
Hemingway added significantly to the connotation of the
mark. In contrast, the design element in applicant’s mark
is relatively small, less distinctive3 and, consequently,
does not contribute as much to the overall commercial
impression of the mark as did the portrait of Ernest
Hemingway to the commercial impression of the SLOPPY JOE’S
mark.
Given the relatively small size of the design element
in applicant’s mark, we consider this a case where it is
appropriate to follow the general rule that words are
normally accorded greater weight when assessing the
significance of a mark, because the words are likely to
make an impression upon purchasers that would be remembered
by them and would be used by them to request the goods
and/or services. In re Appetito Provisions Co., 3 USPQ2d
1553, 1554 (TTAB 1987); and Kabushiki Kaisha Hattori

3 We add that, insofar as applicant’s mark includes the term
OUTWEAR and applicant admits, brief p. 5, that applicant’s goods
are “specifically directed to hunting and [a] hunting theme” the
tree design would be viewed as tending to suggest that the goods
are appropriate for use in the woods or forest.
Ser. No. 75/781,752
5
Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). See
also: Giant Food, Inc. v. Nation’s Food Service, Inc., 710
F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983).
Finally, we note that each mark includes the term
NORTHERN and a second, disclaimed term. Disclaimed or
descriptive terms, though they must be considered when
comparing marks, typically are less significant. Hewlett-
Packard Co. v. Packard Press Inc., 62 USPQ2d 1001, 1003-04
(Fed. Cir. 2002).
The principle is well established that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, while the marks are compared in
their entireties, including descriptive or disclaimed
portions thereof, “there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in
their entireties.” In re National Data Corp., 732 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In the case at hand, both marks derive the greatest
share of their distinctiveness from the use of the term
NORTHERN. Moreover, the connotations of the marks,
considered in their entireties, are quite similar, insofar
as the disclaimed terms do not change the connotation of
Ser. No. 75/781,752
6
each mark as indicative of clothing from, or for use in,
Northern climes. The minor design element in applicant’s
mark does not change this connotation and may indeed
reinforce it.
In sum, the overall commercial impressions created by
the marks are similar and consumers are not likely to
differentiate the marks based on the different disclaimed
words or applicant’s inclusion of a small design element.
Moreover, in reaching this conclusion, we are mindful that
the test, when comparing marks, is not a side-by-side
comparison, which consumers may not have the opportunity to
make, see Puma-Sportschuhfabriken Rudolf Dassler KG v.
Roller Derby Skate Corporation, 206 USPQ 255, 259 (TTAB
1980), and that consumers’ recollection of marks used on or
in connection with general merchandise or services is
somewhat fallible. Spoons Restaurants, Inc. v. Morrison,
Inc., 23 USPQ2d 1735, 1740 (TTAB 1991), aff’d. (No. 92-1086
Fed. Cir. June 5, 1992); and In re Steury Corporation, 189
USPQ 353, 355 (TTAB 1975).
Turning to the respective goods, we reiterate that the
identifications of applicant’s and registrant’s goods
include coats, so the goods are, in part, the same.4

4 When the goods of the parties are directly competitive, the
degree of similarity in the marks necessary to conclude that
Ser. No. 75/781,752
7
Moreover, the examining attorney has made of record
numerous use-based third party registrations showing that
the various other clothing items listed by applicant and
registrant are products that may emanate from the same
source under a single mark. The probative value of such
evidence is settled. See In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209, 1211 (TTAB 1999), In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993), In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988). Thus, applicant’s argument that most
of his clothing items are different from most of
registrant’s clothing items is not persuasive support for
finding no likelihood of confusion. The items are of a
general type and consumers would think that they had the
same source or sponsorship if marketed under the same or
similar marks.
Applicant, in regard to channels of trade for the
involved goods, admits that the identifications “speak for
themselves” but notes that his goods are directed to
hunting and a hunting theme.5 Brief p. 5. We agree, to the

confusion among consumers is likely is not as great as when there
are differences in the goods. See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1773 (TTAB 1992).

5 In a response to an earlier Office action, applicant stated
“reference is again made to the statements in the Declaration of
Mr. Su which establish that the marks are applied to indeed
Ser. No. 75/781,752
8
extent that the focus is on the identifications and not any
restrictions that are not included therein. Octocom
Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Interstate
Brand Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1913
(TTAB 2000). Thus, for the purpose of our analysis, the
goods must be deemed to include the listed items of apparel
without restrictions as to types or channels of trade.
Therefore, the involved goods are considered to be marketed
to the same class of consumers through the same channels of
trade.
Applicant argues that his mark is now in use and there
have been no instances of actual confusion in approximately
one year of continuous use. We have no evidence regarding
the extent of use or sales by either applicant or
registrant and discount the mere argument presented by
applicant. See Ranir, supra n.4, 23 USPQ2d at 1774.
Moreover, even if we presumed that the goods have been sold
in the same outlets, so that there would have been an
opportunity for confusion to arise, we have not heard from

different (wholesaler/retailer v. retail customer) channels of
trade.” There was, however, no reference in the earlier
response, or earlier in the response from which we quote this
statement, to any such declaration; and no such declaration is of
record. We consider the statement to have been included in
error.
Ser. No. 75/781,752
9
registrant, whose experience may be different than
applicant’s.
There is one final point made by applicant that we now
address. That is, applicant argues that his “development
of commercial rights in its mark, while relatively minor at
present, is believed to have conferred upon it some degree
of rights to exclude others from use of its mark on similar
goods, and in particular those in close geographic
proximity.” Brief pgs. 5-6. Insofar as applicant may be
alluding to a claim that he has some concurrent use rights
vis a vis registrant, that question is not now before us.
We note, in any event, that a jurisdictional requirement
for a concurrent use application is that an applicant would
have to be able to claim use of its mark in commerce prior
to the filing date of the application that matured into the
cited registration. See TBMP § 1102.02(a)(2). Insofar as
applicant’s arguments suggest that he has only made use of
his mark for approximately one year prior to briefing the
appeal, such use having begun after the filing of his
application, applicant does not appear able to meet this
jurisdictional requirement for a concurrent use
application.
In view of the similarity of the involved marks'
commercial impressions, the overlap in the goods and
Ser. No. 75/781,752
10
relatedness of others, the presumptively similar channels
of trade and classes of consumers, we find there to exist a
likelihood of confusion or mistake by consumers.
Decision: The refusal of registration under Section
2(d) is affirmed.