Missako Franchising, S.A.

Trademark Trial and Appeal Board

Feb 21, 2006

No. 78254972 (T.T.A.B. Feb. 21, 2006)

Mailed: 2/21/06

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Missako Franchising, S.A.
________

Serial No. 78254972
_______

Leonard Tachner, Esq. for Missako Franchising, S.A.

Midge F. Butler, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Quinn, Hohein and Kuhlke, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Missako Franchising, S.A.
to register the mark shown below

for “clothing and related clothing accessories, namely,
Bermuda shorts, shirts, bikinis, shorts, sweaters, swim
trunks, scarves, short jackets, undershirts, bikini
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78254972
2
panties, blouses, polo shirts, athletic shirts, skirts,
bathing suits, coats, hats, slippers, belts, pajamas,
underpants, panties, socks, panty hose, dresses and
trousers” in International Class 25.1 The literal portion
of the mark reads “GREEN BY MISSAKO.”2 Applicant disclaimed
the word “Green” apart from the mark.
The trademark examining attorney refused registration
in Class 25 under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, if applied to applicant’s
goods, would so resemble the previously registered mark
GREEN for “footwear”3 and “men and children’s dress shoes,
dress casual shoes, casual shoes, boots, men, women and
children’s sandals, huaraches, and slippers”4 as to be
likely to cause confusion. The same entity owns both
registrations.
When the refusal was made final in Class 25, applicant
appealed. Applicant and the examining attorney filed

1 Application Serial No. 78254972, filed May 28, 2003, based on
an allegation of a bona fide intention to use the mark in
commerce. The application also includes services in
International Class 35. The final refusal pertained to Class 25
only. The application, as originally filed, included a claim of
priority under Section 44(d) of the Trademark Act based on a
Brazilian application; this basis subsequently was withdrawn in
applicant’s request for reconsideration.
2 The words “BY MISSAKO,” appearing at the bottom of the mark,
are in a relatively small font size, and the words do not
reproduce well in the image as shown.
3 Registration No. 1151799, issued April 21, 1981; renewed.
4 Registration No. 2343501, issued April 18, 2000.
Ser No. 78254972
3
briefs. An oral hearing was not requested.
Applicant, in urging that the refusal be reversed,
relies on three main arguments: that the term “green” is
in common use in the clothing field such that the
commonality of the term in the involved marks is an
insufficient basis upon which to base a finding of
likelihood of confusion; that the sun burst design (or
daisy flower-like design) in applicant’s mark dominates the
term GREEN in its mark;5 and that the presence of BY MISSAKO
in applicant’s mark makes the likelihood of confusion even
more remote. In support of its arguments, applicant
submitted seventy-one third-party registrations of marks
that include the term GREEN covering clothing and footwear.
The examining attorney maintains that applicant’s mark
is dominated by the literal portion, GREEN, and that this
word is identical to the entirety of registrant’s mark.
The examining attorney also contends that the goods are
related and, in this connection, she submitted several use-
based third-party registrations showing the same entity has
registered the same mark for both clothing and footwear.
Our determination of the issue of likelihood of

5 Applicant, in its request for reconsideration, refers to the
design feature in its mark as a “daisy flower-like design.” In
its appeal brief, applicant describes the design as both a “sun
burst design” and a “daisy flower design.”
Ser No. 78254972
4
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 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. 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).
We first turn to consider the goods. Throughout the
prosecution of its application, applicant was conspicuously
silent on this du Pont factor; moreover, applicant’s brief
is devoid of any remarks directed to the goods, failing to
offer any response in its brief to the examining attorney’s
contention that the goods are related.
It is not necessary that the respective goods be
similar or competitive, or even that they move in the same
channels of trade to support a holding of likelihood of
confusion. It is sufficient that the respective goods are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
Ser No. 78254972
5
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originate from the same producer. In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
We acknowledge that there is no per se rule governing
likelihood of confusion in cases involving clothing items.
In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). At
the same time, we note that likelihood of confusion has
been found in prior cases where it was determined that
goods of the same kind as or analogous to those involved
herein are related for the purpose of deciding likelihood
of confusion issues. See Cambridge Rubber Co. v. Cluett,
Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (CCPA 1961)
[WINTER CARNIVAL for women’s boots and men’s and boy’s
underwear]; General Shoe Co. v. Hollywood-Maxwell Co., 277
F.2d 169, 125 USPQ 443 (CCPA 1960) [INGENUE for shoes and
INGENUE for brassieres]; Avon Shoe Co. v. David Crystal,
Inc., 279 F.2d 607, 125 USPQ 607 (2d Cir. 1960) [HAYMAKERS
for women's shoes and HAYMAKER for women's sportswear,
including blouses, shirts, and dresses]; In re Keller,
Heumann & Thompson Co., 81 F.2d 399, 28 USPQ 221 (CCPA
1936) [TIMELY for men's shoes and TIMELY for men's suits,
Ser No. 78254972
6
topcoats and overcoats]; Villager, Inc. v. Dial Shoe Co.,
256 F.Supp. 694, 150 USPQ 528 (E.D.Pa. 1966) [THE VILLAGER
and JUNIOR VILLAGER for young women's wearing apparel,
including inter alia, dresses, skirts, blouses, slacks,
jackets, and MISS VILLAGER for shoes]; In re Pix of
America, Inc., 225 USPQ 691 (TTAB 1985) [NEWPORTS for
women’s shoes and NEWPORT for outer shirts]; and United
States Shoes Corp. v. Oxford Industries, Inc., 165 USPQ 86
(TTAB 1970) [COBBIES BY COS COB for women's and girl's
shirt-shifts and COBBIES for shoes].
As the Board stated in In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991):
In this case we have women's shoes, on
the one hand, and women's pants,
blouses, shorts and jackets, on the
other. Despite applicant’s argument to
the contrary, we believe that these
goods are related. 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 that
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. They may be found
in the same stores, albeit in different
departments.

Ser No. 78254972
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Notwithstanding the specific differences between
clothing items and footwear, we find them to be
sufficiently related for the same reasons quoted above,
that, when sold under similar marks, purchasers are likely
to be confused. The respective goods travel in the same
trade channels (department stores, clothing stores, and the
like), and the goods would be bought by the same
purchasers. These purchasers would include ordinary
consumers who, in making purchases of clothing and
footwear, would exercise nothing more than ordinary care.
Moreover, due to the normal fallibility of human memory
over time, these purchasers would retain a general rather
than a specific impression of trademarks encountered in the
marketplace. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Further, in the present case, the examining attorney
submitted several use-based third-party registrations
issued to entities showing that each entity adopted the
same mark for clothing items and footwear. Third-party
registrations that individually cover different items and
that are based on use in commerce serve to suggest that the
listed goods are of a type that may emanate from a single
source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993).
Ser No. 78254972
8
We next turn to consider the marks. In determining
the similarity or dissimilarity of the marks, we must
compare 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 (Fed. Cir. 2005). 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 their entireties that
confusion as to the source of the goods offered under the
respective marks is likely to result. As noted above, the
focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks. Furthermore, although the marks
at issue must be considered in their entireties, it is well
settled that one feature of a mark may be more significant
than another, and it is not improper, for rational reasons,
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).
Applicant’s mark, as reproduced above, is GREEN BY
MISSAKO and a design. Registrant’s cited mark is GREEN in
standard character form. Applying the above principles in
Ser No. 78254972
9
the present case, we find that applicant’s mark is
sufficiently similar to registrant’s mark that, when
applied to clothing and footwear, confusion would be likely
to occur among consumers in the marketplace.
There is no question that the design portion plays a
prominent role in the commercial impression engendered by
applicant’s mark. However, applicant’s argument that the
design element (whether a sun burst or a daisy flower) is
the dominant portion of its mark is not well taken. The
literal portion of applicant’s mark, GREEN BY MISSAKO,
which in turn is clearly dominated by GREEN, dominates
applicant’s mark. The word GREEN is prominent in terms of
size to the design feature. Moreover, the word GREEN,
which is identical to the entirety of registrant’s mark, is
more likely to be remembered by consumers and used when
calling for the goods. Although the literal portion does
include the words BY MISSAKO, this portion is very small in
size compared to GREEN, and purchasers will likely use only
the GREEN portion in calling for the goods. As such, the
literal element, GREEN, is the dominant element of the mark
and is therefore accorded greater weight in determining the
likelihood of confusion. Ceccato v. Manifattura Lane
Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192 (TTAB
1994); and In re Appetito Provisions Co., 3 USPQ2d 1553
Ser No. 78254972
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(TTAB 1987). Although applicant is correct in pointing out
that the Federal Circuit has cautioned that there is no
general rule as to whether words or a design dominate in
any particular mark, it is highly unlikely that consumers
will call for applicant’s goods by “the sun burst design”
or “the daisy flower design”; rather, given the easily
pronounced and one-syllable word “Green,” it is far more
likely that this term will be used by customers in buying
applicant’s clothing.
The GREEN portion of applicant’s mark is identical in
sound to the entirety of registrant’s mark GREEN.
As to appearance, the GREEN portion of applicant’s
mark is stylized, but not in a significant fashion.
Registrant’s mark GREEN is presented in standard
characters; thus, registrant is not limited to any
particular depiction. The rights associated with a mark in
standard characters reside in the wording and not in any
particular display. The registered mark presumably could
be used in the same manner of minimally stylized display as
in applicant’s mark. See, e.g., Jockey International Inc.
v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992),
citing INB National Bank v. Metrohost Inc., 22 USPQ2d 1585
(TTAB 1992); and In re Melville Corp., supra at 1388.
Ser No. 78254972
11
With respect to connotation, applicant offers the
following argument: “The term ‘GREEN’ standing alone might
connote color. In a certain setting, however, it connotes
fresh flowers or healthy plants, the great outdoors and a
clean environment. Thus, in placing a looming sun burst
design over the word ‘GREEN,’ [applicant’s] mark creates
the impression of a child’s garden, a sense reinforced by
the child-like lettering design of the word ‘green.’”
(Appeal Brief, p. 11). There is no evidence of record in
support of applicant’s perception of its mark. In our
view, it is not certain how consumers will perceive the
word GREEN in the respective marks. Consumers may well
perceive the word in both marks in its ordinary sense as
the name of a color. On the other hand, to the extent, as
applicant argues, that the term may suggest the outdoors or
a clean environment, that same suggestion may be conveyed
by the term “GREEN” standing alone.6
In view of the similarities pointed out above,
applicant’s and registrant’s marks engender sufficiently

6 We take judicial notice of the following dictionary definitions
of the term “green.” The term is defined as “of the color green;
having the color of growing fresh grass; having abundant verdure;
covered by green growth or foliage.” Webster’s Third New
International Dictionary (unabridged ed. 1993). We also note
this additional meaning: “(usu. Green): concerned with or
supporting protection of the environment as a political
principle.” The New Oxford American Dictionary (2001).
Ser No. 78254972
12
similar overall commercial impressions as applied to the
goods.
In sum, the marks, when considered in their
entireties, create similar commercial impressions, and the
differences between the marks are insufficient to
distinguish them when used in connection with related
goods. See In re Chatam International Inc., 380 F.3d 1340,
71 USPQ2d 1944, 1946 (Fed. Cir. 2004)[“Viewed in their
entireties with non-dominant features appropriately
discounted, the marks [GASPAR’S ALE for beer and ale and
JOSE GASPAR GOLD for tequila] become nearly identical.”];
In re The U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985)[CAREER
IMAGE (stylized) for clothing held likely to be confused
with CREST CAREER IMAGES (stylized) for uniforms]; and In
re Apparel Ventures, Inc., 229 USPQ 225 (TTAB 1986)[SPARKS
BY SASSAFRAS (stylized) for clothing held likely to be
confused with SPARKS (stylized) for footwear].
The disclaimer of the word GREEN apart from
applicant’s mark does not impact our analysis inasmuch as
disclaimed terms must be considered when comparing the
marks. In re National Data Corp., supra at 751 [“the
technicality of a disclaimer in [an] application to
register [a] mark has no legal effect on the issue of
likelihood of confusion”]; and In re MCI Communications
Ser No. 78254972
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Corp., 21 USPQ 2d 1534, 1537 (Commr. 1991) [“disclaimer of
matter will never serve to obviate the issue of likelihood
of confusion”].
Applicant introduced more than seventy third-party
registrations of marks comprising, in part, the term GREEN
covering clothing and footwear. Applicant argues that this
evidence shows that “the term ‘green’ is exceedingly weak
as applied to items of wearing apparel including footwear.”
(Brief, pp. 3-4). A few of the marks (as for example,
GREEN BRAND, GREEN LABEL, GREEN GEAR and THE GREEN
COLLECTION) are closer to the marks involved herein than
are others (as for example, GREEN EAGLE, GREEN RIVER, THE
GREENE TURTLE and GREEN IGUANA where the additional wording
alters the meaning of the marks). We also note that other
than registrant’s cited mark GREEN, there are no
registrations of GREEN per se. In any event, the third-
party registrations of these marks do not compel a
different result. As often stated, this evidence does not
establish that the registered marks are in use or that the
public is familiar with them. AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973);
and Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324,
153 USPQ 406 (CCPA 1967). Accordingly, this type of
evidence is of extremely limited value in likelihood of
Ser No. 78254972
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confusion determinations. United Foods Inc. v. J.R.
Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987).
Applicant also argues that the presence of BY MISSAKO
in its mark serves to reduce the likelihood of confusion
between the marks. Although we certainly have considered
BY MISSAKO in comparing the marks in their entireties, this
portion of the mark, as noted earlier, is very small in
size relative to the rest of applicant’s mark. Further, it
is more likely that consumers will refer to the goods as
GREEN, as opposed to the entire phrase GREEN BY MISSAKO.
Thus, in contrast to applicant’s contention on this point,
we do not view the addition of BY MISSAKO to be sufficient
to render the marks as a whole distinguishable. See In re
Christian Dior, S.A., 225 USPQ 533 (TTAB 1985).
We conclude that consumers familiar with registrant’s
footwear, shoes, boots, sandals, huaraches and slippers
sold under the mark GREEN would be likely to believe, upon
encountering applicant’s mark GREEN BY MISSAKO and design
for clothing and related clothing accessories, that the
goods originate with or are somehow associated with or
sponsored by the same source.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
Ser No. 78254972
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registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register as to the goods
identified in Class 25 is affirmed. The application will
proceed to publication for the services recited in Class
35.