Massi

Trademark Trial and Appeal Board

Sep 11, 2006

No. 78431260 (T.T.A.B. Sep. 11, 2006)

Mailed: September 11, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Massi
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Serial No. 78431260
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Roger N. Behle, Jr. of Behle Law Corporation for Amanda
Massi.

Timothy J. Finnegan, Trademark Examining Attorney, Law
Office 104 (Chris Doninger, Managing Attorney).
_______

Before Quinn, Hairston and Walsh, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Amanda Massi has filed an application to register the
mark MIELE for goods and services ultimately identified as
“clothing, namely, jackets, sweaters, vests, sweat shirts,
sweat suits, jogging suits, shirts, blouses, t-shirts,
pants, jeans, shorts, skirts, skorts, dresses, hats, and
footwear, namely, shoes, pumps, sandals, sneakers, and
boots” in International Class 25; and “retail clothing
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78431260
2
boutiques” in International Class 35.1 The application
includes an English translation of MIELE as “honey.”
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, if applied to the identified
goods and services, would so resemble the mark CARLOS
MIELE, which is registered for “clothing, namely, sweaters,
cardigans, shirts, t-shirts, blouses, jackets, blazers,
pullovers, coats, suits, pant suits, dresses, cocktail
dresses, beaded tops, sequin tops, halter tops, tank tops,
tailleurs, chemises, jumpers, skirts, mini skirts, pants,
jeans, pantsuits, shorts, lingerie, underwear, bikinis,
ties, neckwear, belts, gloves, socks, stockings, pantyhose,
knee highs, leggings, suspenders, scarves, bodysuits,
jogging suits, sweat suits, swimwear, bathing trunks,
beachwear, sleepwear, bathrobes, pajamas, loungewear,
infant wear, rainwear, wedding gowns, evening gowns;
footwear, namely, athletic shoes, pumps, sandals, sneakers,
boots, shoes; headwear, namely, hats, caps,”2 as to be
likely to cause confusion or mistake or to deceive.

1 Serial No. 78431260, filed on June 7, 2004, which is based on
an allegation of a bona fide intention to use the mark in
commerce.
2 Registration No. 2,760,974, issued April 15, 2003. The
registration includes the statement that “The name ‘CARLOS MIELE’
identifies a living individual whose consent is of record.”
Ser No. 78431260
3
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
Before turning to the merits of the case, we must
discuss two evidentiary matters. Applicant states that an
excerpt from an Italian-American dictionary is attached to
her 7/12/05 response to the examining attorney’s first
Office action. However, we are unable to locate this
excerpt in the electronic records of the file of this case.
Nonetheless, the Board will take judicial notice that in
Cassell’s Italian Dictionary (1967) the word “miele” is
defined as “honey.”3
With her appeal brief, applicant submitted an Internet
printout from the website http://www.nonalinaskitchen.com
which consists of a glossary of commonly used ingredients
in Italian cuisine. The printout contains a listing for
“miele.” The examining attorney has objected to the
printout as untimely submitted. The examining attorney’s
objection is sustained and we have given no consideration

3 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
Ser No. 78431260
4
to this printout in reaching our decision herein.4 See
Trademark Rule 2.142(d).
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Turning first to a consideration of the goods and
services, it is clear that applicant’s items of clothing
are identical in part (e.g., sweaters, t-shirts, jackets,
dresses, pumps, sandals, sneakers, and boots) and are
otherwise closely related to the items in registrant’s

4 We should add that even if we had considered the printout, the
result in this case would be the same. The information in the
printout is simply cumulative of the dictionary definition and
applicant’s other evidence.
Ser No. 78431260
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clothing line. Applicant’s retail clothing boutiques are
also related to the registrant’s clothing. Indeed,
applicant acknowledges that she and registrant are both in
the business of retail clothing. (Brief at p. 3). Both
applicant and registrant’s wearing apparel would be sold to
the same classes of purchasers, namely, ordinary consumers,
through the same channels of trade, namely, clothing
stores, department stores and mass merchandisers.
Likewise, applicant’s retail clothing boutiques would be
frequented by ordinary consumers. Under the circumstances,
if applicant’s goods and services and registrant’s goods
are offered for sale under the same or similar marks,
confusion as to their source or sponsorship is likely to
occur.
Considering then the marks, applicant contends that
the marks are dissimilar because MIELE is the Italian word
for “honey,” whereas CARLOS MIELE is clearly a person’s
name. Applicant maintains that the marks are also
distinguishable because her mark is a single word and the
cited mark is two words. Applicant also argues that
registrant’s mark is weak because it is primarily merely a
surname, and therefore is entitled to only a limited scope
of protection.
Ser No. 78431260
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As evidence of the meaning of “miele,” applicant
submitted two Internet printouts. The first printout is an
advertisement for a handbag and reads in pertinent part:
Authentic PRADA Handbag
Prada BR 1845 Leather Miele Purse (Honey Tan)
This gorgeous PRADA handbag features alluring
detail. From its mouth dropping leather in Miele
(honey tan) color…

The second printout is for a recipe entitled “Miele
Biscotti (Honey Biscotti).”
The examining attorney, on the other hand, argues that
the dominant part of each mark is the term MIELE; and that
applicant cannot avoid a likelihood of confusion simply by
deleting the word CARLOS. As to the connotations of the
marks, in particular, the examining attorney argues that
MIELE can mean “honey” and act as a surname as well, and
therefore applicant’s mark MIELE may suggest a person’s
surname and registrant’s mark CARLOS MIELE may suggest a
person’s full name.
With respect to the marks, we must determine whether
applicant’s mark and registrant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks must be considered in their entireties,
it is well-settled that one feature of a mark may be more
Ser No. 78431260
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significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Furthermore, the test is not whether the marks can
be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their commercial impression that
confusion as to the source of the goods and services
offered under the respective marks is likely to result.
The focus is on the recollection of the average 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).
We find that the marks are similar in terms of
appearance and sound, differing only by the word CARLOS.
This additional word in registrant’s mark does not
distinguish the marks visually or aurally. In terms of
connotation and commercial impression, we also find that
the marks are similar. Obviously, the cited mark CARLOS
MIELE is a person’s name. With respect to applicant’s mark
MIELE, while Italian certainly is not an obscure language
in the United States, we nonetheless question how many U.S.
consumers would know that MIELE means “honey” in Italian.
Ser No. 78431260
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In this regard, we note that in the Internet printouts
submitted by applicant, the uses of “Miele” therein are
followed by translations, i.e., “MIELE Purse (HONEY TAN)”
and “Miele Biscotti (Honey Biscotti).” This indicates that
the authors of these materials felt it necessary to provide
a translation of “miele” for the U.S. public. We believe
that the primary significance of MIELE to clothing
purchasers in the U.S. would be that of a surname. It is
common practice for clothing manufacturers to identify
their clothing by surnames. Thus, purchasers seeing MIELE
on applicant’s clothing or retail clothing boutiques would
likely view it as a surname. In short, we find that both
marks connote or suggest a person’s name.
Thus, when the marks are considered in their
entireties, we find that they are similar in appearance,
sound, connotation and commercial impression. In a
somewhat similar case, our primary reviewing court upheld a
refusal to register the mark JOSE GASPAR GOLD for tequila
in view of the registered mark GASPAR’S ALE for beer and
ale. In re Chatham International Incorporated, 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004). The Court held that
“[w]ith respect to JOSE, the Board correctly observed that
the term simply reinforces the impression that GASPAR is an
individual’s name. Thus, in accord with considerable case
Ser No. 78431260
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law, the JOSE term does not alter the commercial impression
of the mark.” Chatham, 71 USPQ2d at 1946. See also Nina
Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070,
12 USPQ2d 1901 (Fed. Cir. 1989) [VITTORIO RICCI and NINA
RICCI are confusingly similar].
Finally, applicant argues that the cited mark CARLOS
MIELE is primarily merely a surname and therefore a weak
mark that is entitled to only a limited scope of
protection. Apart from the fact that the mark CARLOS MIELE
is not primarily merely a surname, but rather a full name,
there is no evidence of record establishing that the cited
mark is weak. Therefore, the cited mark is entitled to the
normal scope of protection, including protection against
registration of applicant’s confusingly similar mark for
identical and closely related goods and services.
We conclude that purchasers, who are familiar with
registrant’s CARLOS MIELE mark for its various items of
clothing, would be likely to believe, upon encountering
applicant’s MIELE mark for its articles of clothing and
retail clothing boutiques, that such goods and services
emanate from, or are sponsored by or associated with the
same source.
To the extent that there is any doubt on the issue of
likelihood of confusion, it is settled that such doubt must
Ser No. 78431260
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be resolved in favor of the prior registrant and against
applicant. See In re Pneumatiques, Caoutchouc Manufacture
et Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729
(CCPA 1973).
Decision: The refusal to register is affirmed as to
the goods in class 25 and the services in class 35.