Melanie Hart

Trademark Trial and Appeal Board

Apr 12, 2013

No. 77909807 (T.T.A.B. Apr. 12, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: April 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Melanie Hart
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Serial No. 77909807
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Robert O’Connell, Jr. and Anthony H. Cataldo, of Goodwin Procter LLP, for Melanie
Hart.

Anne M. Farrell, Trademark Examining Attorney, Law Office 105 (Thomas G.
Howell, Managing Attorney).
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Before Bucher, Shaw and Kuczma, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Melanie Hart (“applicant”), appeals from the final refusal to register the
following mark in standard character format:

for the following goods:
Towels that may be worn as a dress or similar garment in
Class 24; and
Serial No. 77909807

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Dresses; Skirts; Slacks in Class 25.1
The examining attorney issued a final refusal to register the mark2 pursuant
to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing the following
Registration, owned by Kahn Lucas Lancaster, Inc. as reflected in the Office
records, as a bar to registration:
Registration No. 36348293
Mark: KALULA KIDS
For: Children’s clothing, namely, girls’ dresses, tops,
pants, and skirts, separately and in sets in Class 25.
After the refusal was made final, applicant appealed and filed a request for
reconsideration which was denied. Applicant and the examining attorney have filed
briefs. For the reasons set forth below, the refusal to register is affirmed.
Likelihood of Confusion
Our determination under § 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key

1 Application Serial No. 77909807 filed on January 12, 2010, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
2 In the June 13, 2011 Final Office Action, the requirement that applicant pay the
applicable surcharges for loss of Teas Plus status was also made final. Pursuant to
authorization to charge the designated deposit account provided by applicant subsequent to
filing her appeal briefs, the $50 additional surcharge fee per Class for both Classes has
been paid.
3 Registration No. 3634829 issued June 9, 2009, for a standard character mark; the word
“KIDS” is disclaimed.
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considerations are the similarities between the marks and the similarities between
the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We have considered these and any other
du Pont factors on which applicant and the examining attorney have submitted
evidence and argument. To the extent that other factors are applicable, we treat
them as neutral.
A. Similarity of Goods, Channels of Trade and Classes of Consumers
We first consider the du Pont factor involving the similarity or dissimilarity
of applicant’s goods (towels that may be worn as a dress or similar garment, and
dresses; skirts; slacks), in relation to the goods in the cited registration (children's
clothing, namely, girls’ dresses, tops, pants, and skirts) and their channels of trade
and classes of consumers. It is well-settled that the issue of likelihood of confusion
between applied-for and registered marks must be determined on the basis of the
goods and services as they are identified in the involved application and
registration. Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d
901, 177 USPQ 76, 77 (CCPA 1973); In re Accelerate s.a.l., 101 USPQ2d 2047, 2050
(TTAB 2012).
Because the identification of goods in Class 25 in the cited registration is not
limited to a particular type of dresses, skirts and slacks, we must presume that it
covers all types of such items, including the girl’s dresses, skirts and pants in
applicant’s application. Therefore, the goods of applicant and the cited registrant
are, at minimum, identical in part to the extent they both include dresses, skirts
and pants or slacks. In determining the similarity of applicant’s and registrant’s
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goods, it is sufficient if likelihood of confusion for each Class of goods is established
for any item encompassed by the identification of goods for that Class. See In re
Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010) citing Tuxedo Monopoly,
Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981).
Similarly, the identification of the remaining goods in applicant’s application,
namely, towels that may be worn as a dress or other garment, is not limited, and
therefore includes towels that may be worn by children. Towels that may be worn
by children as a dress or other garment are clearly related to the children’s clothing
items in the cited registration. Accordingly, applicant’s goods in Class 24 are closely
related to the goods in the cited registration.
Applicant argues that the clothing items in her application and the cited
registration differ because her clothing is for women while the cited registration
covers children’s clothing. The identification of goods in applicant’s application is
not limited to women’s clothing. However, even if the clothing items were limited to
women’s clothing, they would still be related to the children’s clothing recited in the
cited registration. The relatedness of women’s clothing and children’s clothing is
demonstrated by the evidence submitted by the examining attorney showing third-
party retailer websites which offer women’s and children’s clothing.4 Indeed, the
evidence from www.oldnavy.com and www.gap.com demonstrates that girls’ dresses

4 See attachments to June 13, 2011 Final Office Action consisting of printouts from
www.gap.com, www.landsend.com, www.llbean.com, www.hannaandersson.com and
www.oldnavy.com.
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in particular (identified in the cited registration) are sold alongside men’s and
women’s clothing; and the www.landsend.com, www.llbean.com and
www.hannaandersson.com websites demonstrate that children’s clothing, and men’s
and women’s’ clothing, are sold alongside each other. This evidence shows
applicant’s goods and the goods in the cited registration are related because they
are the types of products offered for sale together and sold by the same entity. The
fact that these entities concentrate their businesses on clothing and are not mass
retailers selling all types of products, increases the probative value of this evidence.
While there is no per se rule that all clothing items are related, many cases
have recognized different types of clothing items to be related goods. See
Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 128 USPQ 549, 550
(CCPA 1961) (women’s boots related to men’s and boy’s underwear); In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and
jackets related to women’s shoes); In re Pix of America, Inc., 225 USPQ 691, 691-92
(TTAB 1985) (women’s shoes related to outer shirts); and In re Cook United, Inc.,
185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats and trousers related to ladies’
pantyhose and hosiery). Thus, there is sufficient evidence that applicant’s goods
and the goods in the cited registration are closely related.
The relatedness of the products is also amply demonstrated by the thirteen
use-based, third-party registrations, that recite men’s, women’s and children’s
clothing items, submitted by the examining attorney.5 Although these registrations

5 Copies of these thirteen third-party registrations, owned by twelve different registrants,
were attached to the June 13, 2011 Final Office Action. Although fourteen registrations
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are not evidence that the marks shown therein are in use or that the public is
familiar with them, they nonetheless have probative value to the extent they are
based on use in commerce and serve to suggest that the goods identified therein are
of a kind which may emanate from a single source under a single mark, i.e., that it
is common for the same entity to provide men’s, women’s and children’s clothing
under the same mark. See In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1203
(TTAB 2009); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993). Thus, consumers encountering applicant’s clothing items and the cited
registrant’s children’s clothing sold under similar marks are likely to believe the
goods emanate from the same source.
Because there are no limitations as to trade channels or classes of purchasers
in the description of goods in either of the applications or the cited registration, we
must presume that the respective goods travel through all usual trade channels for
such goods and to all classes of prospective purchasers for those goods. See In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) and In re Elbaum, 211 USPQ
639, 640 (TTAB 1981).
The website evidence submitted by the examining attorney shows that
applicant’s goods and the goods in the cited registration are related, move in the
same channels of trade, and are sold under conditions that would create a potential
for confusion such as being offered for sale on the same websites. The evidence also
indicates that the goods would be purchased by the same consumers. To the extent

were actually submitted, Registration No. 2985118 was not considered because it only
identifies “infants and childrens clothing” [sic].
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applicant’s and registrant’s respective clothing items are not restricted to particular
trade channels and are therefore offered to the general consuming public, the
classes of purchasers overlap and this overlap also weighs in favor of a finding of
likelihood of confusion under du Pont. In re Wilson, 57 USPQ2d 1863, 1866 (TTAB
2001).
Based on the legally identical or highly related nature of the goods set forth
in the application and cited registration, and the similar trade channels and
customers, the du Pont factors of the similarity of the goods, trade channels and
customers favor a finding of likelihood of confusion.
B. Similarity of the Marks
We now turn to the du Pont factor focusing on the similarity or dissimilarity
of the marks in their entireties as to appearance, sound, meaning and commercial
impression. du Pont, 177 USPQ at 567.
Looking at applicant’s CALLULA LILLIBELLE mark and the cited KALULA
KIDS mark, the marks are different in appearance. However, the first word in each
mark is phonetically identical.
In comparing the marks, we are mindful that the test is not whether the
marks can be distinguished when subjected to a side-by-side comparison, but rather
whether the marks in their entireties are sufficiently similar in terms of their
overall commercial impression so that confusion as to the source of the goods offered
under the respective marks is likely to result. Coach Services Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) and San
Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
Serial No. 77909807

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USPQ 1, 3 (CCPA 1977). The focus is on the recollection of the average purchaser
who normally retains a general rather than specific impression of trademarks. See
L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); and Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
As to the meaning of the marks, CALLULA LILLIBELLE is the name of
applicant’s daughter.6 In the absence of any evidence as to the meaning of the word
“Kalula” in the cited mark, we concur with applicant’s speculation that the word is a
contraction formed from the beginning letters of the words in the name of the owner
of the registration, Kahn Lucas Lancaster, Inc. In view of the apparent origin of the
word “Kalula” and given the context in which it is used in the KALULA KIDS mark,
the word “Kalula” would be perceived as identifying a name. Thus, both marks
begin with an identical sounding name.
Because the word KIDS in the cited mark is descriptive of children’s clothing,
the dominant portion of the cited mark is KALULA; this is also consistent with the
disclaimer of the word KIDS. Although a disclaimed portion of a mark cannot be
ignored, and the marks must be compared in their entireties, one feature of a mark
may be more significant in creating a commercial impression. Disclaimed matter is
typically less significant or less dominant when comparing marks. See In re Dixie
Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985); and SMS, Inc.
v. Byn-Mar, Inc., 228 USPQ 219, 220 (descriptive feature can be afforded less

6 See October 14, 2010 Response to Office Action, “Mark identifies name of living individual,
Callula Lillibelle Hart, minor daughter of applicant.”
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weight in confusion analysis). Thus, the dominant portion of the cited mark is the
word KALULA.
The first word in applicant’s mark and in the cited mark are phonetic
equivalents, which can be enough for us to find a likelihood of confusion. In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (similarity in any one of the
elements of appearance, sound, meaning or connotation may be sufficient to find the
marks confusingly similar); and In re 1st USA Realty Professionals, Inc., 84
USPQ2d 1581, 1586 (TTAB 2007) (similarity in sound alone may be sufficient for
finding of likelihood of confusion) citing Krim-Ko Corp. v. The Coca-Cola Bottling
Co. of New York, 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968). This is
particularly so because consumers are generally more inclined to focus on the first
word in any trademark or service mark. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005); see also Mattel Inc. v. Funline Merchandise Co., 81 USPQ2d 1372,
1374-75 (TTAB 2006) and Presto Products, Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of mark which is most
likely to be impressed upon the mind of a purchaser and remembered” when
making purchasing decisions).
Applicant argues that the word LILLIBELLE in its mark is sufficiently
distinctive to distinguish its mark from the cited mark. Whether or not
LILLIBELLE is distinctive, the inclusion of the word LILLIBELLE in applicant’s
mark is not sufficient to avoid confusion, particularly in view of the distinctiveness
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of the name KALULA. In the absence of evidence that “Kalula” or “Callula” are
weak terms for clothing, consumers familiar with the cited mark may well believe
that applicant’s CALLULA LILLIBELLE mark is used in connection with a new
line of clothing from the maker of the KALULA KIDS clothing. This is especially so
with respect to fashions where “the reference to a feminine name could be taken by
the customer as identifying the designer.” Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376
F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (THE LILLY confusingly similar to
LILLI ANN); In re Southern Belle Frozen Foods Inc., 48 USPQ2d 1849, 1851 (TTAB
1998) (consumers familiar with registrant’s SHRIMP ROYALE packaged shrimp
meal may conclude applicant’s SEAFOOD ROYALE frozen crab product is a new
line of seafood from the maker of the SHRIMP ROYALE product); NutraSweet
Company v. K & S Foods Inc., 4 USPQ2d 1964, 1968 (TTAB 1987) (purchasers
familiar with NUTRASWEET product, upon viewing NUTRA SALT, would be likely
to believe it was a new product line put out by the NUTRASWEET producer or that
the product was somehow associated with or sponsored by the people producing the
NUTRASWEET product); Nina Ricci S.A.R.L. v. Haymaker Sports Inc., 134 USPQ
26, 28 (TTAB 1962) (persons familiar with NINA RICCI or RICCI for women’s
apparel would logically assume that women’s clothing bearing RICCI OF
HAYMAKER emanates from same source or is connected in some way).
Accordingly, applicant’s mark is similar to the cited mark.

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Conclusion
Where the goods of the applicant and cited registrant are identical in part
and/or closely related as they are in this case, the degree of similarity between the
marks required to support a finding of likelihood of confusion is not as great as
would be required with diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1987); also see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73
USPQ2d 1350, 1354 (Fed. Cir. 2004). After considering the applicable du Pont
factors, we find that the goods involved are so closely related that their sale under
marks beginning with phonetically identical names is reasonably likely to cause
confusion, or to cause mistake or to deceive.

Decision: The refusal to register the mark in application Serial No. 77909807
under § 2(d) of the Trademark Act is affirmed.