Mike Tonche

Trademark Trial and Appeal Board

Jun 24, 2011

No. 77730883 (T.T.A.B. Jun. 24, 2011)

Mailed:
June 24, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mike Tonche
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Serial No. 77730883
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Raman N. Dewan of Jackson Walker LLP for Mike Tonche.

David E. Tooley, Jr., Trademark Examining Attorney, Law
Office 112 (Angela Wilson, Managing Attorney).
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Before Seeherman, Wellington and Lykos, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Mike Tonche, an individual, has appealed from the
final refusal of the trademark examining attorney to
register STREETLIGHT CLOTHING, in standard characters, and
with CLOTHING disclaimed, for “clothing, namely, T-shirts,
sweatshirts, shirts, hats, pants, shorts, jackets, and
caps.”1 Registration has been refused pursuant to Section

1 Application Serial No. 77738003, filed May 6, 2009, based on
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (intent-
to-use).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77730883
2
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark so resembles the mark STREET
LIGHTS, registered in standard character form and with
LIGHTS disclaimed, for “footwear incorporating a light
feature,”2 that, if used on applicant’s identified goods, it
is likely to cause confusion or mistake or to deceive.
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. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., 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 the goods, the examining attorney has
made of record a number of third-party registrations
showing that a single mark has been adopted for both the

2 Registration No. 2191991, issued September 29, 1998; Section 8
& 15 affidavits accepted and acknowledged; renewed.
Ser No. 77730883
3
clothing items identified in applicant’s application and
for footwear. See, for example, Registration No. 3736401
for FOX, Registration No. 3760320 for LEONARD STUTZER and
design, Registration No. 3739329 for VIRTUOUS TRUWEAR and
Registration No. 3736835 for BOXING BEE, all of which
include in their identifications footwear and the specific
clothing items listed in applicant’s identification.
We note that the goods identified in the cited
registration are not “footwear” per se, but a very
specialized type of footwear that incorporates a light
feature. We must say that we are somewhat troubled about
how to treat the third-party registration evidence.
Although the third-party registrations do not specifically
identify “footwear incorporating a light feature,” we
recognize that such specificity is not required in an
identification of goods, and is normally not provided by a
registrant. That is, the term “footwear” is an acceptable
identification, whether the registrant uses its mark for
one type or many types of footwear. If we were to require
that third-party registrations reflect every detail of the
goods as identified in an applicant’s application or cited
registration, this could result in applicants adding
irrelevant details to nullify the probative value of third-
party registrations. On the other hand, there is nothing
Ser No. 77730883
4
in the record to show that footwear normally can include a
light feature, such that the term “footwear” in the third-
party registrations should be assumed to include such a
feature.
Bearing in mind these conflicting concerns, we have
decided to give some probative value to these third-party
registrations in showing that applicant’s and the
registrant’s goods are related.3 At the same time, however,
we recognize that, at most, third-party registrations serve
to suggest that the listed goods and/or services are of a
type which may emanate from a single source. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). As
opposed to cases in which shoes and clothing have been
found to be related because they are complementary items,
that is, one might purchase shoes to go with a particular
outfit, and therefore may buy both clothing and footwear
during a single shopping trip, there is nothing in the
record that would indicate that the registrant’s particular
type of footwear incorporating a light feature would be
purchased to complement the type of clothing items

3 We note that the examining attorney also submitted some third-
party registrations for what appear to be “merchandising” marks,
e.g., marks which are registered for a wide variety of articles
and have licensing value, such as registrations owned by Miami
Heat Limited Partnership for MH and design and NBA Development
League Limited for MAD ANTS FORT WAYNE. We have not considered
these registrations.
Ser No. 77730883
5
identified in applicant’s application, or that a consumer
would purchase the identified clothing to complement his or
her footwear. Compare In re Melville Corp. 18 USPQ 1386,
1388 (TTAB 1991), in which women’s shoes were found to be
related to women’s pants, blouses, shorts and jackets:
A woman's ensemble, which may consist of a
coordinated set of pants, a blouse and a jacket,
is incomplete without a pair of shoes which match
or contrast therewith. Such goods are frequently
purchased in a single shopping expedition. When
shopping for shoes, a purchaser is usually
looking for a shoe style or color to wear with a
particular outfit. The items sold by applicant
and registrant are considered to be complementary
goods.

Thus, although we find the third-party registrations
sufficient to show that the goods are related, this du Pont
factor does not strongly favor a finding of likelihood of
confusion.
The examining attorney has asserted that the goods
travel in the same channels of trade. In support of this
position, he has submitted printouts from three on-line
retail stores. The page from the Old Navy website,
http://oldnavy.gap.com, lists, under “Shoes & Slippers,”
sandals, flats, skimmers, heels, wedges, boots, slippers
and flip-flops, and also lists “Tees & Polos, Shirts &
Tops, Pants, Shorts & Capris and Outerwear”; the page from
the Eddie Bauer website, www.eddiebauer.com, advertises
Ser No. 77730883
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denim jeans and also shows a photograph of a man and woman
in an outdoor setting, urging viewers to “Be the first to
shop our New! Fall 2009 Collection.” This page lists at
the top various categories, including “Swim,” “Men,”
“Women” and “Shoes & Accessories”; the printout from the
Kenneth Cole website, www.kennethcole.com, features shoes
and boots and also lists at the top of the page the
categories “Men,” “Women,” “Kids,” “Shoes,” “Accessories,”
“Clothing,” “Sale.”
None of these printouts shows shoes with a light
feature, such as the shoes identified in the cited
registration. Because shoes with a light feature may be a
specialty item that is not sold in the same channels of
trade as ordinary footwear, we cannot conclude from the
examining attorney’s evidence that simply because footwear
in general and clothing are sold through the same websites,
that the goods identified in applicant’s application and
the cited registration are sold in the same channels of
trade.4 However, it is clear from the nature of the goods

4 In his brief the examining attorney refers to the printouts in
support of his statement that “many apparel companies both
produce and sell clothing and footwear.” p. 8. We point out
that while the websites show that these entities sell both
clothing and footwear, we cannot ascertain from the evidence of
record whether the goods are produced by the sellers or sold
under the same brand; further, because the excerpts show only
category titles, without showing actual product, we cannot
Ser No. 77730883
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themselves, i.e., they are ordinary consumer items, that
the customers for the goods are the general public. Thus,
whether or not the goods are sold in the same channels of
trade, they will be encountered and purchased by the same
classes of customers.
With respect to the du Pont factor of the conditions
of purchase, neither applicant nor the examining attorney
submitted any evidence about the price range for the
identified goods, or any argument about the discrimination
or lack thereof by the purchasers. Although one of the
internet printouts shows that Old Navy sells sandals for
$15.00, there is no indication that these sandals have a
light feature, and therefore we cannot consider the
registrant’s footwear to be an inexpensive item. We can
therefore conclude only that, since the goods are normal
consumer items, they will be bought by customers exercising
a normal degree of care. This du Pont factor is neutral.
This brings us to a consideration of the marks.
Applicant’s mark is STREETLIGHT CLOTHING, the cited mark is
STREET LIGHTS. In comparing the marks, we begin with the
well-established principle that, in articulating reasons
for reaching a conclusion on the issue of likelihood of

determine, for two of the online retailers, the specific clothing
items that they offer.
Ser No. 77730883
8
confusion, 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 a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). Because the word
“clothing” is generic for applicant’s goods, and therefore
has no source-indicating value, the dominant portion of
applicant’s mark is STREETLIGHT. As for the cited mark,
STREET LIGHTS, although the word LIGHTS has a suggestive or
descriptive significance because the footwear has a light
feature, the mark as a whole also has a double entendre as
meaning streetlamps, and therefore we consider neither
element of this mark dominant.5
Both applicant’s mark and the cited mark are extremely
similar in appearance and pronunciation. The fact that

5 Applicant and the examining attorney have referred to the fact
that each mark contains disclaimed material. Applicant has
complained that the examining attorney treats the fact of the
disclaimers in the application and registration differently: “it
is inequitable to infer that the term “CLOTHING” should be
discounted in Applicant’s mark when analyzing the marks since it
is disclaimed, but the term “LIGHTS” should not be discounted in
the Cited Mark even though it is disclaimed. We point out that
it is not the presence or absence of a disclaimer that determines
the weight to be accorded part of a mark, but the significance
that the disclaimed matter will have to consumers of the goods.
Thus, it is because CLOTHING is the generic term for applicant’s
goods that it has no source-indicating significance, not because
it has been disclaimed.

Ser No. 77730883
9
applicant’s mark contains the word CLOTHING and STREETLIGHT
is depicted as one word and in the singular, while the
cited mark has a space between STREET and LIGHTS and LIGHTS
is in the plural, does not affect the appearance or
pronunciation of the marks sufficiently to distinguish
them. However, when it comes to the connotations of the
marks, there is a significant difference. Because a light
feature is a significant characteristic of the footwear
identified in the cited registration, the word LIGHTS in
the cited mark conveys a meaning separate and apart from
the meaning of “streetlamp” in applicant’s mark. (We take
judicial notice of the dictionary definition of
“streetlight” submitted as part of the examining attorney’s
brief: one of a series of lights that are usually attached
to tall poles, are spaced at intervals along a public
street or roadway, and are illuminated from dusk to dawn.
Also called streetlamp.6) When combined with the word
STREET, which applicant contends “is easily associated with
footwear,” brief, p. 3, the cited mark has a different
connotation from applicant’s mark, which is solely that of
a “streetlamp.”

6 The American Heritage Dictionary of the English Language ©
2007. The Board may take judicial notice of dictionary
definitions. 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).
Ser No. 77730883
10
We note the examining attorney’s argument that the
word “street” is associated with all types of clothing, not
just footwear, because “street” is defined as “appropriate
for wear or use in public: street clothes.”7. However,
because of the goods with which the word STREET is used,
and the manner in which the term appears in both marks,
including the fact that in applicant’s mark STREET is not
depicted as a separate word, but is merged with LIGHT so
that the overall mark is perceived as having the meaning
“streetlamp,” we do not view the word STREET as having the
same meaning in the two marks. Rather, we agree with
applicant that in connection with footwear, it indicates
that the footwear is used to walk on the street, while the
meaning of “appropriate for wear in public” is not conveyed
in the mark STREETLIGHT for clothing.8
The Board has previously found that even the use of an
identical mark is not likely to cause confusion if, because
of the goods or services involved, the marks convey

7 The American Heritage Dictionary of the English Language ©
2007. We take judicial notice of this definition included in the
examining attorney’s brief.
8 On the contrary, if consumers recognized the meaning of STREET
in applicant’s mark as “appropriate for wear in public,” the
STREET element would have a descriptive significance. The word
LIGHT might then be viewed as meaning “lightweight,” and the mark
as a whole would suggest lightweight clothing appropriate for
wear in public. We hasten to add that we do not consider
applicant’s mark to convey such meaning.

Ser No. 77730883
11
different meanings. In particular, the Board has reached
such a result when the goods at issue are types of
clothing. See, for example, In re Sears, Roebuck and Co.,
2 USPQ2d 1312 (TTAB 1987) (no likelihood of confusion
between CROSS-OVER for bras and CROSSOVER for ladies’
sportswear, namely, tops, shorts and pants); In re British
Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (no likelihood of
confusion between PLAYERS for men’s underwear and PLAYERS
for shoes); and In re Sydel Lingerie Co., Inc., 197 USPQ
629 (TTAB 1977) (no likelihood of confusion between BOTTOMS
UP for ladies’ and children’s underwear and BOTTOMS UP for
men’s suits, coats and trousers).
In the present case, due to the specialized nature of
the registrant’s goods, i.e., the footwear incorporates a
light feature, the cited mark STREET LIGHTS has a readily
recognizable meaning relating to this light feature that is
absent from applicant’s mark STREETLIGHTS used for shirts,
sweatshirts, t-shirts, pants and the like.9 Accordingly, we
find that the marks are different in connotation and in

9 In his brief the examining attorney makes the statement
“applicant has not limited its goods to exclude clothing
incorporating a light feature.” However, there is no evidence of
record that clothing normally includes a light feature, such that
we must treat applicant’s identified clothing as encompassing
clothing items with a light feature.

Ser No. 77730883
12
commercial impression. We also find that these differences
are significant to the outcome of this appeal.
As has often been said, each case must be determined
on the particular facts. Under the facts of this case,
including the specialized nature of the goods identified in
the cited registration; the lack of any evidence regarding
any complementary nature of these specific goods and the
clothing items identified in applicant’s application or
that the goods are sold in the same channels of trade; and
the additional meaning of the registrant’s mark that is
absent from applicant’s mark, we find that the Office has
failed to meet its burden of proving that applicant’s mark
is likely to cause confusion with the cited registration.
Decision: The refusal of registration is reversed.