Master Italia SpA

Trademark Trial and Appeal Board

Feb 29, 2008

No. 79028103 (T.T.A.B. Feb. 29, 2008)

Mailed: February 29, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Master Italia SpA
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Serial No. 79028103
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Stewart L. Gitler of Hoffman, Wasson & Gitler, P.C. for Master
Italia SpA.

Daniel Brody, Trademark Examining Attorney, Law Office 115 (Tomas
V. Vlcek, Managing Attorney).
_______

Before Quinn, Walters and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Master Italia SpA to
register the mark ATLANTIS (in standard character form) for goods
ultimately identified as "fashion headwear, namely hats, head
wraps, visors, caps, bandanas, berets, scarves and gloves, none
of which are for use as protective gear in marine and leisure
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 79028103
2
sports nor sold in souvenir novelty shops adjacent to departure
points of submarine sightseeing excursions" in Class 25.1
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the registered mark shown below for "protective clothing for
marine and leisure sports-namely, rainwear, pants, jackets, hats,
shirts and sweaters" (in Class 25), as to be likely to cause
confusion.2

When the refusal was made final, applicant appealed. Briefs
have been filed.

1 Serial No. 79028103, filed on May 30, 2006 under 66(a) of the
Trademark Act. It is unclear how "gloves" fit into the category of
"fashion headwear," but that is not an issue before us and we accept
the identification of goods as written.

2 Registration No. 1212225, issued October 12, 1982; renewed. The
registration includes three additional classes of goods. However,
registration has been refused solely on the basis of Class 25. The
identification of goods in the application was amended to include the
"novelty shop" restriction in response to the examining attorney's
citation of two additional registrations, owned by the same entity:
Reg. No. 1913234 for the mark ATLANTIS SUBMARINES (and design) and Reg.
No. 1919223 for the mark ATLANTIS, both for "souvenir clothing; namely,
men's, women's and children's t-shirts, hats, and visors sold in
souvenir novelty shops adjacent to departure points of applicant's
submarine sightseeing excursions." The refusals as to these
registrations were subsequently withdrawn.
Serial No. 79028103
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. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to a consideration of the marks in their
entireties in terms of sound, appearance, meaning and commercial
impression. The two marks are identical in sound, both
consisting of the identical word, ATLANTIS. Similarity in sound
alone has been held sufficient to support a finding of likelihood
of confusion. See Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728,
156 USPQ 523, 526 (CCPA 1968). In addition, these marks are
identical in meaning, and they create virtually identical
commercial impressions.
The only difference in the two marks is the stylized display
of the word ATLANTIS in registrant's mark. However, this
difference is not sufficient to distinguish one mark from the
other as the stylization is not so distinctive that it affects
the commercial impression created by registrant’s ATLANTIS mark
in any significant way. It is the word ATLANTIS itself, rather
Serial No. 79028103
4
than the particular display of the word, that is more likely to
have a greater impact on purchasers and be remembered by them.
In addition, because applicant is seeking registration of
the mark in standard character form, we must consider all
reasonable manners in which applicant could depict its mark. See
Phillips Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35, 36
(CCPA 1971). See also Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000) (typed drawings are
not limited to any particular rendition of the mark). We
recognize that a standard character drawing for ATLANTIS only
affords protection for all reasonable manners of presentation,
not all possible forms no matter how extensively stylized.
Nevertheless, applicant could reasonably depict its mark in a
wide variety of typefaces or fonts, including a display very
similar to the stylized display of registrant's mark, thereby
increasing the visual similarity of the two marks.
Applicant does not dispute that the marks are similar. It
is applicant's contention that registrant's mark is not entitled
to a broad scope of protection. In particular, applicant argues,
without support, that there are nearly a hundred registrations
incorporating the term ATLANTIS "covering almost all
International classes that coexist on the register." Brief at 4.
Applicant also argues that "numerous" third-party registrations
that include or contain the term ATLANTIS for goods in Class 25
Serial No. 79028103
5
coexist on the register. Applicant has submitted printouts of
four such registrations:3 Reg. No. 2386713 for the mark JOURNEY
TO ATLANTIS for "clothing, namely shirts, jackets and headwear";
Reg. No. 2205435 for the mark ATLANTIS RISING for "clothing,
namely, caps and shirts"; and two registrations owned by the same
entity, Reg. No. 1913234 for the mark ATLANTIS SUBMARINES (and
design) and Reg. No. 1919223 for the mark ATLANTIS, both for
"souvenir clothing; namely, men's, women's and children's t-
shirts, hats, and visors sold in souvenir novelty shops adjacent
to departure points of applicant's submarine sightseeing
excursions."
To begin with, the factor to be considered in determining
likelihood of confusion under du Pont is the number and nature of
similar marks "in use on similar goods" (emphasis added). See
du Pont, supra at 567. The alleged existence of numerous
registrations for ATLANTIS for dissimilar goods, even if true, is
irrelevant to the question of whether the marks applied to the
goods involved herein are likely to cause confusion. Nor does it
matter that similar third-party marks "coexist on the register."
The relevant consideration is whether the marks are in use in
commerce, and third-party registrations are not evidence of use

3 Applicant relies on two additional third-party registrations.
However, one registration (Reg. No. 2364819) has been cancelled and is
of no probative value; and the other registration (Reg. No. 3037461) is
for services in an unrelated field.
Serial No. 79028103
6
of the marks therein. See AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973).
Third-party registrations may, however, may be used to
indicate that a commonly registered term has a suggestive meaning
for particular goods or services such that differences in other
portions of the marks may be sufficient to render the marks as a
whole distinguishable. See, e.g., Tektronix, Inc. v. Daktronics,
Inc., 187 USPQ 588, 592 (TTAB 1975), aff'd, 534 F.2d 915, 189
USPQ 693, 694-95 (CCPA 1976). Considering the third-party
registrations for that purpose, the evidence is still not
persuasive. The existence of four third-party registrations, two
of which are owned by the same entity, is insufficient to show
that the term "Atlantis" has been frequently adopted and
registered as a trademark or part of a trademark for goods
related to those in the cited registration. Furthermore, the
marks in this case consist solely or substantially of the word
ATLANTIS. There is no other matter to distinguish them.
Also unpersuasive is applicant's argument that the cited
registration "has not reached any level of distinctiveness to be
afforded a broad scope of protection." Brief at 3. The cited
mark is registered on the Principal Register and is entitled to a
presumption of distinctiveness. Applicant has presented no
evidence that ATLANTIS is commonly used or highly suggestive of
Serial No. 79028103
7
the goods, or any other evidence that the mark is weak and
entitled to only a limited scope of protection.
In fact, the mark by its nature is relatively strong. We
take judicial notice of the definition of "Atlantis" from The
American Heritage Dictionary of the English Language (Fourth
Edition 2000) as meaning "Mythology A legendary island in the
Atlantic Ocean west of Gibraltar, said by Plato to have sunk
beneath the sea during an earthquake."4 The term appears to be
essentially arbitrary for the goods, with at most some vague
suggestive meaning as to registrant's clothing for "marine"
activities. This makes it even more likely that the marks, if
used on related goods, would cause confusion. See In re Wilson,
57 USPQ2d 1863 (TTAB 2001).
We turn then to the goods. Applicant's goods are identified
as "fashion headwear, namely hats, head wraps, visors, caps,
bandanas, berets, scarves and gloves, none of which are for use
as protective gear in marine and leisure sports nor sold in
souvenir novelty shops adjacent to departure points of submarine
sightseeing excursions." Registrant's goods are defined as
"protective clothing for marine and leisure sports-namely,
rainwear, pants, jackets, hats, shirts and sweaters." The goods

4 From the website www.bartleby.com. The Board may take judicial
notice of dictionaries, including online dictionaries, which exist in
printed format. See, e.g., University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); and In re CyberFinancial.Net
Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).
Serial No. 79028103
8
are in part identical and/or legally identical ("hats" and
"caps") and otherwise closely related clothing items. We note
that the examining attorney has submitted a number of use-based,
third-party registrations covering, in each instance, items
listed in both the application and the cited registration. For
example, Reg. No. 2381885 for the mark PURE DIRT lists headwear,
as well as shirts and pants; Reg. No. 3143399 for the mark DEAN
MILLER lists gloves and "headwear, namely, visors,
hats...bandanas," as well as shirts, pants, jackets and sweaters;
and Reg. No. 3095220 for the mark THE LAZY TURTLE (and design)
lists caps, scarves, gloves and hats," as well as shirts,
jackets, sweaters and pants. These third-party registrations,
although not evidence of use of the marks in commerce, serve to
suggest that the respective goods are of a type which may emanate
from the same source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467 (TTAB 1988).
The examining attorney has also submitted printouts from
various retail websites showing that the respective items of
apparel in fact emanate from the same source. For example,
www.aeropostale.com sells both caps and jackets under the
AEROPOSTALE mark; www.abercrombie.com sells caps, as well as
shirts and jackets under the AMBERCROMBIE & FITCH or A. FITCH
Serial No. 79028103
9
marks; and www.polo.com sells both caps, as well as sweaters and
shirts under the POLO RALPH LAUREN mark.
Applicant maintains that its identification of goods, which
is "fashion headwear" excluding headwear used as "protective
gear" used in leisure sports, "expressly distinguishes" its goods
from those in the cited registration, and that "protective
clothing" for marine and leisure sports "is not the same as
'fashion headwear.'" Brief at 4.
Contrary to applicant's contention, the limitations do not
serve to distinguish the goods. First, applicant cannot
effectively exclude "protective" headwear from its identification
of goods because headwear, such as hats, caps, visors and
scarves, by its nature performs a protective function. The
examining attorney has submitted a dictionary listing from
www.askoxford.com defining "visor" as "a stiff peak at the front
of a cap" and "a screen for protecting the eyes from unwanted
light"; and a listing from www.encarta.msn.com defining "cap" as
"hat: a covering for the head, usually soft and close fitting and
often with a visor and no brim" and as "protective covering for
hair." (Emphasis added.) Further, applicant's exclusion of
headwear for leisure sports is an unnatural restriction. We must
assume that consumers will use applicant's headwear for all the
usual purposes, and that would include use for engaging in
leisure sports activities such as walking, or playing golf or
Serial No. 79028103
10
tennis. There is nothing inherent in the goods, as described,
which would make applicant's headwear unfit or unsuitable for
this purpose.
Further, the term "fashion" simply refers to the latest
style of clothing. We take judicial notice of the definition of
"fashion" as "Something, such as a garment, that is in the
current mode: a swimsuit that is the latest fashion." The
American Heritage Dictionary of the English Language (Fourth
Edition 2000). The term does not limit the use of applicant's
headwear. We also take judicial notice of the definition of
"hat" in Microsoft Encarta College Dictionary at 656 (2001) as
"a covering for the head, worn for protection from the weather or
as a fashion accessory." Similarly, a listing from
www.infoplease.com defines "scarf" as "a long, broad strip of
wool, silk, lace, or other material worn about the neck,
shoulders, or head, for ornament or protection against cold,
drafts, etc." It is clear that the same "headwear" including
applicant's hats and scarves, can be both stylish as well as
functional.
Indeed, applicant's website (www.masteritaliasrl.com), which
contains photographs of golf courses and sailboats and a
description of applicant's ATLANTIS products, shows that
applicant touts its own "fashion" headwear as both stylish and
functional. The following are just a few examples:
Serial No. 79028103
11
...Atlantis has risen throughout the years,
conceptually inspired by the world of sport, to
become a leader in its own right... . The brand,
like sportswear, has become a must have item for the
day-to-day urban wardrobe - a combination of
functionality and style... .

...on a setting for street culture with its diverse
influences of sport, urban and youth couture.
Atlantis stands "here" a fashion and sports label in
its own right... .

Functional, high performance, light-weightiness are
the aims of this brand. The spirit is definitely
sportive but the hats also very hip.

Our collections are in many ways fairly unpretentions
[sic], in that, they bridge the gap between the
sporting world and that of high street trends.

In addition, the examining attorney has introduced evidence
showing that other companies also sell "fashion" headwear for use
in leisure sports activities. For example, the website of RALPH
LAUREN (www.polo.com) sells a "driving cap," "golf sport cap,"
"tennis sport cap," "tennis sport visor," and "golf sport visor,"
as well as "golf shirts" and "tennis jackets," all imprinted with
the company's various "fashion" marks and logos; and the BURBERRY
website (www.burberryusaonline.com) sells "baseball caps" and
"golf" wear under the BURBERRY mark.
Purchasers would naturally assume, if they encounter
applicant's and registrant's identical hats and caps, and their
other closely related apparel items under the near identical
ATLANTIS marks, that such products come from or are associated
with the same company.
Serial No. 79028103
12
Because the goods are in part identical and otherwise
closely related, and given the absence of legally effective
restrictions in the application, we must presume that the
respective goods are sold in the same channels of trade,
including all the usual retail outlets, with the narrow exception
of "souvenir novelty shops adjacent to departure points of
submarine sightseeing excursions." See, e.g., Herbko
International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d
1375 (Fed. Cir. 2002). The third-party websites mentioned above,
as well the additional examples of retail websites in the record
such as www.gap.com, www.abercrombie.com, www.guess.com, and
www.benetton.com, all show that so-called "fashion" headwear and
other items of apparel that can be used in leisure sports are in
fact advertised and sold together on the same online catalogs.
Furthermore, we must also presume that the purchasers for
these identical and closely related goods are the same, or at
least overlap to the extent that they both will be sold to
ordinary consumers who engage in leisure sports. Again,
applicant's attempt to exclude those who engage in leisure sports
from the group of potential purchasers for its "fashion headwear"
must fail.
Applicant's argument that purchasers of "fashion headwear"
and "protective clothing" for use in leisure sports are
"sophisticated and well educated" is unsupported and
Serial No. 79028103
13
unpersuasive. Applicant and registrant are both providing
ordinary items of wearing apparel, notwithstanding that this
apparel may also be used as protection from the elements when
walking, playing golf or engaging in other leisure sports. We
have no evidence that purchasers would exercise anything other
than ordinary care in selecting such products. In any event,
even sophisticated or careful purchasers would be confused as to
source where, as here, nearly identical marks are used on
identical goods. See In re Research Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle Chemical
Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ
110, 112 (CCPA 1970) ("Human memories even of discriminating
purchasers...are not infallible.").5
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.

5 It is clear from the above discussion, that this case is readily
distinguishable from In re W.W. Henry Co., 82 USPQ2d 1213 (TTAB 2007)
on which applicant relies. Unlike the facts of Henry, the present case
involves nearly identical, essentially arbitrary marks, as well as
identical goods, trade channels and purchasers.