Miles Urquiza

Trademark Trial and Appeal Board

May 30, 2013

No. 85340881 (T.T.A.B. May. 30, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 30, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Miles Urquiza
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Serial No. 85340881
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Luke Brean of Breanlaw, LLC for Miles Urquiza.

Doritt Carroll, Trademark Examining Attorney, Law Office 116 (Michael W. Baird,
Managing Attorney).
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Before Kuhlke, Gorowitz and Masiello, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Miles Urquiza, seeks registration on the Principal Register of the
mark shown below for goods identified as “caps; polo shirts; t-shirts,” in
International Class 25.1

1 Application Serial No. 85340881 was filed under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b), based on an allegation of an intention to use the mark in commerce.

Serial No. 85340881

2

Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified
goods, so resembles the following registered marks, all owned by D.P.I. Imports,
Inc.:
GALLERY in typed form for “women’s coats,” in International Class
25;2

GALLERY in typed form for “girls’ coats, girls’ jackets, girls’ suits,
girls’ sweaters and girls’ blazers,” in International Class 25;3 and

GALLERY in typed form for “women’s and girls’ coats, jackets, suits,
sweaters and blazers,” in International Class 25.4

as to be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed and briefs have been
filed.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in 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 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks

2 Registration No. 1369094, issued on November 5, 1985, Sections 8 and 15 declaration
accepted and acknowledged, renewed.

3 Registration No. 1440034, issued on May 19, 1987, Sections 8 and 15 declaration accepted
and acknowledged, renewed.

4 Registration No. 1495208, issued on July 5, 1988, Sections 8 and 15 declaration accepted
and acknowledged, renewed.

Serial No. 85340881

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and the similarities between the goods or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We begin with the du Pont factor of the relatedness of the goods. We base our
evaluation on the goods as they are identified in the registrations and application.
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled that it is
not necessary that the respective goods be identical or even competitive in order to
find that they are related for purposes of our likelihood of confusion analysis. That
is, the issue is not whether consumers would confuse the goods themselves, but
rather whether they would be confused as to the source of the goods. See In re Rexel
Inc., 223 USPQ 830 (TTAB 1984).
In support of her position that applicant’s caps, polo shirts and t-shirts are
related to registrant’s women’s and girls’ coats, jackets, suits, sweaters and blazers,
the examining attorney submitted several pages from various third-party websites
displaying goods similar to applicant’s and registrant’s goods for sale on the same
page. In particular, the record includes several examples of sweaters, t-shirts and
polo shirts offered for sale under the same mark on the same web page. See, e.g.,
Office Action (October 25, 2011) pp. 4-45 (www.juicycouture.com,
www.freepeople.com and www.7forallmankind.com). It is sufficient for a finding of
likelihood of confusion if the relatedness is established for any item encompassed by
the identification of goods within a particular class in the application. Tuxedo
Serial No. 85340881

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Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA
1981).
Applicant concedes that “it is common for a single entity to manufacture both
of these types of clothing.” App. Br. p. 4. Applicant’s argument that “Applicant has
sought to register the mark ... for a line of … lightweight clothing for golfers [and]
registrant has a very narrow focus on producing outerwear for women and girls,”
(App. Br. p. 5) ignores the well-established rule that we must make our
determination as to the goods identified in the application and registrations and not
based on the actual goods and channels of trade. Octocom Systems, 16 USPQ2d at
1783. Because there are no limitations in the identifications, applicant’s caps, polo
shirts and t-shirts include those for women and girls and registrant’s jackets and
sweaters include those worn by golfers. We note, however, that there is no evidence
in the record to support a relationship between “women’s coats” and applicant’s
goods. The H.D. Lee Co., Inc. v. Maidenform, Inc., 87 USPQ2d 1715, 1723 (TTAB
2008) (no per se rule all clothing is related).
In view thereof, we find applicant’s goods to be related to the goods in
Registration Nos. 1440034 and 1495208 but not to the goods in Registration No.
1369094 which solely lists “women’s coats.”
With regard to the channels of trade, because the goods are so closely related,
and there are no limitations in the identifications of the application and cited
Registration Nos. 1440034 and 1495208, we must presume that they are offered in
the same channels of trade to the same classes of customers. Hewlett-Packard Co.,
Serial No. 85340881

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62 USPQ2d 1001. Moreover, the evidence of record establishes that they travel in
the same channels of trade.
We turn then to the du Pont factor of the similarities and dissimilarities
between applicant’s mark and registrant’s GALLERY mark. We
analyze “the marks in their entireties as to appearance, sound, connotation and
commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
quoting du Pont, 177 USPQ at 567.
The literal portion of applicant’s mark is identical in sound to registrant’s
mark. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (sound alone may
be sufficient to create a likelihood of confusion). In addition, the meanings are the
same to the extent that GALLERY is arbitrary in relation to the respective goods
and would engender the same meaning in each case. While the addition of the golf
club design in applicant’s mark may, upon seeing the mark, evoke the meaning of
golf, that could be perceived as a refinement or subset of the general GALLERY line
of clothing. Moreover, because the cited marks are registered in typed form they
are not limited to any particular display, but can be used in any stylization,
including that similar to applicant’s mark. Citigroup Inc. v. Capital City Bank
Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011). Further, the
literal element is the dominant portion of applicant’s mark, and the stylized L’s in
the form of golf clubs do not serve to distinguish it from registrant’s mark. In re
Serial No. 85340881

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Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987). In view thereof, we
find the marks to be very similar.
In conclusion, we find that because the goods are closely related, the channels
of trade and classes of consumers are the same, and the marks are similar,
confusion is likely between applicant’s mark and the mark
GALLERY in Registration Nos. 1440034 and 1495208.
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed as to Registration Nos. 1440034 and
1495208 but reversed as to Registration No. 1369094.