Natalie Scantlin

Trademark Trial and Appeal Board

Mar 27, 2013

No. 85362985 (T.T.A.B. Mar. 27, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: March 27, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Natalie Scantlin
________

Serial No. 85362985
_______

Charles C. McCloskey of Charles C McCloskey LLC for Natalie
Scantlin.

Simon Teng, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Cataldo, Taylor and Shaw,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Natalie Scantlin, filed an application to
register on the Principal Register THE PONYTAIL CAP (CAP
disclaimed) as a mark in standard characters for “baseball
caps; baseball caps and hats; cap visors; caps; hats” in
International Class 25.1

1 Application Serial No. 85362985 was filed July 5, 2011 under
Section 1(a) of the Trademark Act, based on applicant’s assertion
of January 1, 2010 as a date of first use of the mark anywhere
and January 2, 2010 as a date of first use of the mark in
commerce.
Ser. No. 85362985
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its goods, so
resembles the mark

previously registered on the Principal Register in standard
characters for “handbags; tote bags” in International Class
18,2 as to be likely to cause confusion. In addition, the
examining attorney refused registration under Trademark Act
Section 2(e)(1) on the ground that the mark merely
describes the identified goods.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.

2 Registration No. 3898993 issued January 4, 2011 with the
following statements: “The mark consists of the wording
‘PONYTAIL CAP’ over a design of a silhouette of a lady’s head
wearing a ponytail cap.” “Color is not claimed as a feature of
the mark.”

Ser. No. 85362985
3
Likelihood of Confusion
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, 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 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, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Marks
We begin our analysis by looking at the similarities
and dissimilarities of the marks in the application and
registration when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). The test, under the first du Pont
factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
Ser. No. 85362985
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the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result.
In comparing the marks, we note that applicant’s mark,
THE PONYTAIL CAP, incorporates the entirety of the wording
in registrant’s PONYTAIL CAP and design mark. The presence
of the term “THE” in applicant’s mark does not create a
significant difference between the marks. Accord Jay-Zee,
Inc. v. Hartfield-Zodys, Inc., 207 USPQ 269 (TTAB 1980);
and United States National Bank of Oregon v. Midwest
Savings and Loan Association, 194 USPQ 232, 236 (TTAB
1977). The marks are similar in that they contain the
identical wording PONYTAIL CAP. The design of the
silhouette of a woman with a ponytail wearing a cap in
registrant’s mark reinforces the wording PONYTAIL CAP and
draws additional attention thereto. Also, it is settled
that when a mark comprises both a word and a design, the
word is normally accorded greater weight because it would
be used by purchasers to request the goods or services. In
re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For
these reasons, we find that PONYTAIL CAP, the wording
shared by applicant’s mark and that of registrant, is the
Ser. No. 85362985
5
dominant term in both and accordingly it is entitled to
more weight in our analysis.
With regard to the strength of registrant’s mark, we
note that applicant has made of record a number of third-
party registrations for marks containing the term PONYTAIL
or the term CAP, but not both, for a variety of clothing
items. Because the proffered third-party registrations do
not contain the terms PONYTAIL CAP common to both marks, we
are not persuaded that the mark in the cited registration
is weak or otherwise entitled to a narrow scope of
protection as applied to registrant’s identified goods,
namely, handbags and tote bags. It further is settled that
evidence of weakness or dilution consisting solely of
third-party registrations is generally entitled to little
weight in determining the strength of a mark, because such
registrations do not establish that the registered marks
identified therein are in actual use in the marketplace or
that consumers are accustomed to seeing them. See AMF Inc.
v. Am. Leisure Prods., Inc., 177 USPQ 268, 269 (C.C.P.A.
1973).
Based upon the foregoing, we find that, when viewed in
their entireties, the marks THE PONYTAIL CAP and PONYTAIL
CAP and design are more similar than they are different in
terms of appearance, sound, connotation and overall
Ser. No. 85362985
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commercial impression. Applicant has taken the wording in
registrant’s mark, which term is reinforced by the design
therein, and added a definite article “THE” to it. Thus,
it is likely that the marks would be viewed as variations
of each other, but still pointing to the same source.
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
The Goods
We next turn to a consideration of the goods. It is
not necessary that the goods at issue 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 instead that the respective goods are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods are such 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. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, the examining attorney has made of
record nine use-based, third-party registrations which show
that various entities have adopted a single mark for goods
that are identified in both applicant’s application and the
Ser. No. 85362985
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cited registration.3 Third-party registrations which
individually cover a number of different items and which
are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). In addition,
evidence made of record by the examining attorney from
registrant’s internet website and social media site
indicate that registrant also offers for sale hats
specifically designed for women with ponytails in addition
to the handbags and tote bags identified in its
registration.
We are not persuaded by applicant’s arguments that
because the goods at issue are classified in different
International Classes, confusion is unlikely. It is well-
settled that the determination concerning the proper
classification of goods is a purely administrative
determination unrelated to the determination of likelihood
of confusion. Jean Patou, Inc. v. Theon, Inc., 29 USPQ2d
1771, 1774 (Fed. Cir. 1993).
In this case, the evidence of record suggests that
applicant’s and registrant’s goods are related apparel and

3 These include Registration Nos. 4042941; 4007402; 4017002;
4021547; 3943776; 3914586; 3997039; 4024027; and 4022908.
Ser. No. 85362985
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accessory items that may emanate from a common source. As
a result, this du Pont factor further favors a finding of
likelihood of confusion.
Channels of Trade and Classes of Purchasers
We are not persuaded by applicant’s argument,
unsupported by evidence, that registrant’s goods move in
different channels of trade from those in which its goods
are encountered and the conditions of their sale is such
that they would be encountered by different classes of
consumers. It is settled that in making our determination
regarding the relatedness of the parties’ goods, we must
look to the goods as identified in the involved application
and cited registration. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). See also Paula Payne Products
v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973). As identified in the involved application and
cited registration, neither applicant’s headwear nor
registrant’s handbags and totebags are limited to any
particular channels of trade or classes of purchasers.
That is to say, neither identification of goods includes
any restrictions as to price, target market, or manner in
which the goods are offered for sale. Accordingly, both
applicant’s goods and registrant’s goods must be presumed
Ser. No. 85362985
9
to move in all normal channels of trade and be available to
all classes of potential consumers. See In re Elbaum, 211
USPQ 639, 640 (TTAB 1981).
Summary
We have discussed above all of the du Pont factors for
which we have evidence. All others, to the extent they are
applicable, are considered to be neutral. In summary,
weighing all of the evidence of record as it pertains to
the relevant du Pont factors, we find that a likelihood of
confusion exists as contemplated by Section 2(d) of the
Act.
Mere Descriptiveness
It is well-settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality, feature or
characteristic thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. See Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052. See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term describe all of the
properties or functions of the goods and/or services in
order for it to be considered to be merely descriptive
Ser. No. 85362985
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thereof; rather, it is sufficient if the term describes a
significant attribute or feature about them. Moreover,
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods and/or services
for which registration is sought. See In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). Thus, “[w]hether consumers
could guess what the product is from consideration of the
mark alone is not the test.” In re American Greetings
Corp., 226 USPQ 365 (TTAB 1985).
In support of the refusal, the examining attorney has
made of record a dictionary definition of “ponytail” and an
open-source online encyclopedia entry for “cap.” According
to its definition, a “ponytail” is “long hair that is tied
at the back of the head and hangs down,”4 and a “cap is a
form of headgear. Caps have crowns that fit very close to
the head and have no brim or only a visor.”5 The examining
attorney has further made of record articles and
advertisements retrieved from Internet webpages. The
following excerpts are illustrative:6

4 Macmillandictionary.com.
5 Wikipedia.org.
6 Images reproduced below are from loudonhoundsgear.com/ladies-
pony-tail-cap.
Ser. No. 85362985
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Ser. No. 85362985
12
HATS AND VISORS
FlexFit Ponytail Cap
Same flexfit styling and construction, with
opening for ponytail.7

Ladies try a unique new look in our Low Profile
Pro Style Ponytail Peak Cap. Made from 100%
cotton, this soft pink hat features a 4” long and
11½” wide pre-curved bill attached to the 4
paneled crown measuring 4” deep, and fitted with
an inner terry cloth sweat band. However, the
truly unusual feature to this hat is the large
ponytail hole opening in the back of the cap with
an adjustable strap tab, so you no longer have to
fuss, pull and tug to get your hair out of a
small hat hole.8

Carhatt Girls’ Signature Canvas Ponytail Holder
Cap
Help her block the sun with Carhartt’s signature
canvas cap. Made of 9-ounce, 100& cotton canvas,
it features a pre-curved visor, ponytail holder
and Carhartt label on the front.9

Saucony DryLete Ponytail Skull Cap ViziPro
Featuring exterior DryLete Material to block the
chill and a PromoLite-lined interior band to wick
moisture as you heat up, the Saucony DryLete
Ponytail Skull Cap ViziPro is a stylish way to
keep your head and ears warm in cool to cold
weather. This form-fitting head piece also
features a rear spot for your ponytail to pass
through and neon ViziPro accents to make you more
visible to drivers.10

In the instant case, the evidence made of record by
the examining attorney supports a finding that, as applied
to applicant’s “baseball caps; baseball caps and hats; cap
visors; caps; hats,” the term THE PONYTAIL CAP would

7 Watersafety.com/lifeguard-uniforms
8 Amazon.com/Otto-Caps
9 Getzs.com
10 Runningwarehouse.com
Ser. No. 85362985
13
immediately describe, without conjecture or speculation, a
significant characteristic or feature of such goods,
namely, that they are particularly suited for wear by
individuals with ponytails. The above-referenced
dictionary definition and encyclopedia entry establish that
THE PONYTAIL CAP merely describes a type of close-fitting
headwear – a CAP - that accommodates long hair gathered at
the back of the neck and hangs down – a PONYTAIL. As
identified, applicant’s broadly recited “baseball caps;
baseball caps and hats; cap visors; caps; hats” must be
presumed to include such headwear items that accommodate
ponytails. Thus, as defined, THE PONYTAIL CAP merely
describes a central function, feature or characteristic of
the recited goods.
In addition, the internet articles and advertisements
submitted by the examining attorney establish that the
ability of goods identified by applicant’s THE PONYTAIL CAP
mark to accommodate a ponytail are useful to wearers whose
hair is so styled. Material obtained from the Internet is
acceptable in ex parte proceedings as evidence of potential
public exposure to a term. See In re Fitch IBCA, Inc., 64
USPQ2d 1058 (TTAB 2002).
We note applicant’s argument that its goods do not
themselves feature a ponytail, as do certain caps sold with
Ser. No. 85362985
14
synthetic hair attached to be worn as a costume or
disguise.11 However, the evidence of record clearly
establishes that THE PONYTAIL CAP describes caps designed
to be worn with hair styled in a ponytail. The descriptive
nature of applicant’s mark as applied to its goods is not
diminished by the fact that the term comprising the mark
may also apply to other types of headwear worn for what we
presume are humorous purposes. That a term may have other
meanings in different contexts is not controlling. In re
Bright-Crest, Ltd., 204 USPQ at 593.
Based upon the evidence of record, we find that
applicant’s mark is merely descriptive of the recited goods
as contemplated by Section 2(e)(1) of the Act.
Decision: The refusal of registration is affirmed on
both grounds.

11 The examining attorney made of record internet advertisements
for baseball caps featuring attached synthetic hair in various
forms, including ponytails.