Marlena International, LLC

Trademark Trial and Appeal Board

Oct 28, 2013

No. 85492623 (T.T.A.B. Oct. 28, 2013)

Mailed:
October 28, 2013

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________
In re Marlena International, LLC
________
Serial No. 85492623
_______
Jason A. Bernstein of Barnes & Thornburg LLP, representing Marlena
International, LLC.
Daniel F. Capshaw, Trademark Examining Attorney, Law Office 110 (Chris A. F.
Pedersen, Managing Attorney).
_______
Before Seeherman, Mermelstein and Wolfson, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Marlena International, LLC (“applicant”) seeks registration on the Principal
Register of the mark SHAPZME BY MARENA (in standard character format) for
goods ultimately identified as:
Men’s and women’s athletic wear, shapewear, and
activewear, namely, long sleeve shirts, short sleeve shirts,
T-shirts, sleeveless shirts, tops, tank tops, camisoles,
vests, singlets, jackets, tracksuits, pants, tights, leggings,
capris, shorts, girdles, bras, sports bras, body suits,
abdominal binders, panties, briefs, boxers, sleepwear, leg
warmers, arm warmers, socks, and gloves; compression
garments for nonmedical use, namely long sleeve shirts,
short sleeve shirts, T-shirts, sleeveless shirts, tops, tank
tops, camisoles, vests, singlets, jackets, tracksuits, pants,
tights, leggings, capris, shorts, girdles, bras, sports bras,
body suits, abdominal binding garments, panties, briefs,
This Opinion is Not a
Precedent of the TTAB
Serial No. 85492623

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boxers, sleepwear, leg warmers, arm warmers, socks, and
gloves
in International Class 25.1
The Trademark Examining Attorney has refused registration of applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), contending that
applicant’s use of its mark for its identified goods is likely to cause confusion with
Reg. No. 3803551 for the mark SHAPEME (in standard character format) for
“bottoms; jeans; lounge pants; pants; slacks” in International Class 25.2
When the refusal was made final, applicant appealed and filed a request for
reconsideration. After the examining attorney denied the request for recon-
sideration, the appeal was resumed. We affirm the refusal to register.
As a preliminary matter, applicant argues that the examining attorney failed
to consider evidence and arguments submitted by applicant with its request for
reconsideration. Brief at 3. Applicant makes this claim because it asserts that the
examining attorney, in denying the request, did not address the newly submitted
evidence and arguments. In point of fact, the examining attorney did consider the
evidence, but found the arguments not persuasive and the evidence not
“compelling.” Denial of request for reconsideration, mailed March 12, 2013. Cf. In
re Miracle Tuesday LLC, 695 F.3d 1339, 104 USPQ2d 1330, 1336 (Fed. Cir. 2012)

1 Application Serial No. 85492623 was filed on December 12, 2011, based on an allegation
of first use and first use in commerce of November 1, 2011. The application also includes
goods in Class 10 for which registration has not been refused: “Post-surgical medical
compressive garments, namely, face masks, chin straps, hood masks, shirts, jackets,
camisoles, tank tops, vests, sleeves, body suits, leggings, capris, pants, yoga pants, tights,
shorts, abdominal binding garments, underwear, briefs, panties, bras, girdles, wraps, socks,
gloves, and foam binding garments.” A claim of ownership to Reg. No. 4014424 for the
mark MARENA is of record.
2 Registered June 15, 2010.
Serial No. 85492623

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(“the mere fact that the Board did not recite all of the evidence it considered does
not mean the evidence was not, in fact, reviewed”).
Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 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); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Comparison of the Goods; Trade Channels and Classes of Purchasers
We base our evaluation of the goods as they are identified in the registration
and application. In re Risesmart, Inc., 104 USPQ2d 1931, 1934 (TTAB 2012). See
also, Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
The cited mark is registered for “bottoms; jeans; lounge pants; pants; slacks.”
Applicant has applied to register its mark for a variety of clothing items, including
Serial No. 85492623

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“pants.” Although applicant lists “pants” under the headings of “men’s and women’s
athletic wear, shapewear, and activewear” and “compression garments for
nonmedical use,” the cited registration covers “pants” without restriction or
limitation and therefore is broad enough to encompass the type of “pants” that fall
under the headings in applicant’s identification. Accordingly, the goods are
identical in part, a fact that weighs heavily in favor of a finding of likelihood of
confusion. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1244 (TTAB 2010); In
re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008) (“The identity, at least in
part, between applicant’s and registrant’s goods is a factor that weighs heavily
against applicant in the likelihood of confusion analysis.”); Jansen Enterprises, Inc.
v. Rind and Stone, 85 USPQ2d 1104, 1108 (TTAB 2007). In addition, the examining
attorney has submitted Internet evidence and third-party registrations showing the
relatedness of the remaining items of clothing listed in applicant’s application, but
in view of the fact that the goods are in part identical, there is no need for us to
discuss this additional evidence. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion
must be found if there is likely to be confusion with respect to any item that comes
within the identification of goods or services in the application). Indeed, in its brief,
applicant does not argue that the goods are unrelated. Therefore, we confine our
comments regarding the goods to these legally identical items. Regarding channels
of distribution and likely purchasers, because the goods are identical, and there are
no restrictions in either the application or the cited registration, we must presume
Serial No. 85492623

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that the channels of trade and classes of purchasers for these goods are the same.
See American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade, and be sold to the same
class of purchasers.”).
Accordingly, these du Pont factors weigh in favor of a finding of likelihood of
confusion.
B. Comparison of the Marks
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting du Pont). See also, Palm Bay, 73
USPQ2d at 1692. Similarity in any one of these elements may be sufficient to find
the marks confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB
1988); In re 1st USA Realty Prof’ls , Inc., 84 USPQ2d 1581, 1586 (TTAB 2007). It is
well-established that where, as here, the goods at issue are identical, “the degree of
similarity necessary to support a conclusion of likely confusion declines.” Viterra,
101 USPQ2d at 1908 (citing Century 21 Real Estate Corp. v. Century Life of Am.,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)); In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re J.M. Originals Inc., 6
USPQ2d 1393, 1394 (TTAB 1987). The focus is on the recollection of the average
Serial No. 85492623

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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).
The cited mark is SHAPEME. As a compound mark consisting of two words
run together, it will most likely be perceived as the two words “shape” and “me.”
The first term of applicant’s mark SHAPZME BY MARENA is also likely to be
perceived and articulated as “SHAPES ME.” Because of this, the marks are similar
in appearance and pronunciation. While we must consider the marks in their
entireties, it is the first word that is “most likely to be impressed upon the mind of a
purchaser and remembered.” Presto Products Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897 (TTAB 1988); Palm Bay 73 USPQ2d at 1692; Wet Seal Inc. v.
FD Mgmt. Inc., 82 USPQ2d 1629, 1639 (TTAB 2007). We are not persuaded by
applicant’s argument that the term “SHAPZME” could be pronounced as “shap-z-
me.” Substituting a “Z” for an “S” is not uncommon when a term is deliberately
misspelled.3 See, e.g., In re Carlson, 91 USPQ2d 1198, 1201 (TTAB 2009) (“housing”
misspelled as “houzing”). Thus, it is likely that consumers will view SHAPZME as
the familiar words SHAPES ME, and therefore articulate that portion of the mark
in this fashion. Moreover, the mark as it appears in applicant’s specimen (depicted

3 We note that several of the registrations submitted by applicant are for marks that
include the letter “Z” as a substitute for the letter “S”: Reg. No. 4096576 and 3806273 for
the mark SHAPESHIFTERZ for, inter alia, masquerade costumes, cycling shorts,
swimsuits and bodysuits; Reg. No. 3590462 for the mark SHAPEEZ and design for, inter
alia, bras and shapewear; and Reg. No. 3911428 for the mark MY SHAPZ for panties,
pantyhose, and underwear. In addition, attached to applicant’s Request for
Reconsideration is a web page from http://www.shapeshifterz.com, showing the mark
“ShapeShifterZ” for costumes, boots, and race gear; as well as a web page from
http://myoverstockboutique.blogspot.com, advertising a woman’s undergarment under the
mark SHAPZ .
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Serial No. 85492623

8

With respect to the connotations of the marks, they are virtually the same.
SHAPZME and SHAPEME both evoke the idea of apparel that sculpts one’s body by
compressing or enlarging particular areas. Applicant argues that because its mark
includes the house mark “MARENA” (in the form “BY MARENA”), the marks do not
create the same overall commercial impression. Generally, however, the addition of
a house mark does not serve to distinguish marks and in fact may actually increase
the likelihood that confusion would result because, in most cases, consumers will
view the addition of the house mark as simply an “identification of the previously
anonymous source of the goods.” In re Chica, Inc., 84 USPQ2d 1845, 1848-49
(TTAB 2007). In the case at hand, the addition of “BY MARENA” merely identifies
a previously anonymous source; to a purchaser who is familiar with registrant’s
SHAPEME clothing it would indicate that the registrant is now identifying the
designer of its goods, or that applicant’s mark represented a line of registrant’s
clothing that was designed “by Marena.” Accord, In re Chica, 84 USPQ2d at 1848-
49 (holding CORAZON BY CHICA with design, and CORAZON with design, both
for jewelry, likely to cause confusion); In re Apparel Ventures, Inc., 229 USPQ 225,
226 (TTAB 1986) (holding applicant’s mark, SPARKS BY SASSAFRAS (stylized),
for clothing, and registrant's mark, SPARKS (stylized), for footwear, likely to cause
confusion).
Applicant further argues that the term “shape” is weak, and therefore
consumers have become accustomed to distinguishing marks that include the word
“shape” or the term “shap” based minor differences. The examining attorney “in the
Serial No. 85492623

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Final action, admits that the wording SHAP or SHAPE is weak.” Examining
Attorney’s Brief, at 8. However, he argues that this means only that “shape,” one
element of the registered mark, “is in common use” and not that the words “shape
me” as a whole are weak. Id. at 9.
In an attempt to show that the registered mark as a whole is weak, applicant
submitted a large number of third-party registrations for apparel marks containing
the word “shape” or “shapes.” In general, third-party registrations are not evidence
of consumer perception because they do not demonstrate that the marks shown
therein are in use, or that the public is familiar with them. The Conde Naste
Publications, Inc. v. Miss Quality, Inc., 507 F.2d 1404, 184 USPQ 422, 424-25
(CCPA 1975); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1110 (TTAB 2007).
Here, only one of the registrations is for a mark that contains the identical phrase
“shape me”: Reg. No. 4045669 for the mark SHAPE ME SMOOTH ME for “panties;
ladies’ underwear; women’s underwear.”
In addition, applicant argues that there is a category of apparel identified as
“shapewear,” i.e., garments that “temporarily alter the wearer’s body shape, to
achieve a more fashionable figure,”4 and that advertisers of shapewear commonly
use the word “shape” to identify their products. Applicant submitted several
Internet web pages with its request for reconsideration in this regard. Of these,
only three use the term “SHAPE ME” as a trademark to identify the source of the
product. They are reprinted below:

4 At http://en.wikipedia.org/wiki/Shapewear; attached to request for reconsideration.
Serial No. 85492623

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1. SHAPE ME UP for maternity leggings: 5

2. “SHAPE ME SMOOTH ME THE WORKS” midriff to mid-thigh shaper,6

and

5 At http://www.amazon.com.
6 At http://www.ebay.com. The owner of Reg. No. 4045669 is Holt Hosiery Mills, Inc., but it
is unclear from the website if that is the same entity that is advertising this product.
Serial No. 85492623

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3. “Shape Me A Silhouette Skirt in Pink” for a skirt, offered under what appears to
be the store brand “MDS.”7

“Evidence of widespread third-party use, in a particular field, of marks
containing a certain shared term is competent to suggest that purchasers have been
conditioned to look to the other elements of the marks as a means of distinguishing
the source of goods or services in the field.” In re Broadway Chicken Inc., 38
USPQ2d 1559, 1565-66 (TTAB 1996). However, these three usages, plus the single
registration, are not sufficient to show that the term SHAPE ME is so commonly
used that consumers will look to the other elements in applicant’s mark to
distinguish it from the registrant’s SHAPEME mark. On the contrary, consumers
familiar with registrant’s SHAPEME pants are likely, when they see SHAPZME BY
MARENA on identical goods, to believe that they emanate from the same source.
We do agree that the registrant’s mark is suggestive, and therefore is entitled
to a more limited scope of protection than a mark which consists of an arbitrary
term. However, it is well-settled that even weak marks are entitled to protection
from the use of a very similar mark for legally identical goods. See Matsushita

7 At http://www.mdscollections.com.
Serial No. 85492623

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Electric Company v. National Steel Co., 442 F.2d 1383, 170 USPQ 98, 99 (CCPA
1971) (“Even though a mark may be ‘weak’ in the sense of being a common word in
common use as a trademark, it is entitled to be protected sufficiently to prevent
confusion from source arising”); American Lebanese Syrian Associated Charities,
101 USPQ2d at 1029; In re Chica, 84 USPQ2d at 1850 (“even weak marks are
entitled to protection against registration of similar marks, especially identical
ones, for related goods and services,” citing In re Colonial Stores, 216 USPQ 793,
795 (TTAB 1982)).
C. Conclusion
In view of the fact that the marks are similar, the goods are identical in part,
and therefore the trade channels and classes of purchasers are presumed to be the
same, we find that applicant’s registration of the mark SHAPZME BY MARENA for
the listed goods in International Class 25 is likely to cause confusion with the
registered mark SHAPEME for “bottoms; jeans; lounge pants; pants; slacks.” To
the extent that any of applicant’s points raises a doubt about likelihood of confusion,
that doubt is required to be resolved in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re
Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed.
Cir. 1984).
Decision: The refusal to register applicant’s mark SHAPZME BY MARENA
in International Class 25 is affirmed. As the refusal was limited to International
Class 25, the application will proceed to publication in International Class 10 in due
course.