New York Native, LLC

Trademark Trial and Appeal Board

Nov 28, 2007

No. 78543976 (T.T.A.B. Nov. 28, 2007)

Mailed: November 28, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re New York Native, LLC
________

Serial No. 78543976
_______

Charles W. Grimes of Grimes & Battersby, LLP for New York
Native, LLC.

Paul F. Gast, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
_______

Before Walters, Rogers and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by New York Native, LLC to
register the mark shown below on the Principal Register for
the following goods, as amended:
Women’s t-shirts, long sleeve t-shirts, cotton
tops, sweaters, sweat suits, pants, skirts,
jackets, hats, lingerie, tank tops, scarves,
jeans and wraps; men’s t-shirts, long sleeve t-
shirts, jeans, sweat suits, pants, jackets, hats,
undergarments, tank tops, sweaters, golf shirts
and button down shirts

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78543976
2
in International Class 25.1

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as intended to be used in connection with
applicant’s goods, so resembles the following previously
registered marks,

for “clothing, namely, golf shirts,” in International Class
25,2 and

1 Application Serial No. 78543976 was filed on January 7, 2005,
based on applicant’s allegation of a bona fide intent to use the
mark in commerce, with a disclaimer of “NEW YORK and the map of
the State of New York” and the following description of the mark:
“The mark consists of an outline of a map of New York State
together with the wording ‘new york native.’”
2 Registration No. 2822360 was issued on March 16, 2004 with a
disclaimer of “RESTAURANT” and with the following description of
the mark: “The words ‘NATIVE NEW YORKER RESTAURANT’ in stylized
print.”
Ser No. 78543976
3

also for “clothing, namely, golf shirts,” in International
Class 25,3 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs. In
addition, applicant filed a reply brief.
Evidentiary Issues
Before turning to the substantive ground for refusal,
we note that applicant has submitted several exhibits with
its main brief on appeal. These exhibits consist of copies
of the specimens of use from the application files of the
cited registrations; printouts from “a website evidencing
use of the Registered Marks” (brief, p. 4); printouts from
the United States Patent and Trademark Office’s Trademark
Electronic Search System (TESS) of a listing of third-party

3 Registration No. 2824536 was issued on March 23, 2004 with a
disclaimer of “RESTAURANT” and the following description of the
mark: “The design consists of the outline of the New York
skyline and the words ‘NATIVE NEW YORKER RESTAURANT.’”
Ser No. 78543976
4
registrations for various “NATIVE” formative marks; and
copies of third-party registrations for various “NATIVE”
formative marks for various goods. Normally such evidence
would be viewed as untimely and would not be considered.
See Trademark Rule 2.142(d), which provides that the record
in the application should be complete as of the filing of
the appeal. However, the examining attorney has
acknowledged in his brief that “[a]pplicant’s brief
included numerous registrations containing the term
‘native’ as evidence that the term is common and diluted”
(brief. p. 3). Accordingly, we deem the examining attorney
to have treated these third-party registrations and TESS
listing of third-party registrations as being of record,
and we have therefore considered them. In contrast, the
copies of registrant’s specimens and website printout
concerning registrant’s use of its mark will be given no
further consideration, as these were not treated by the
examining attorney as items of record.
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
Ser No. 78543976
5
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,
however, 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).
Similarity of the Goods
We begin by comparing applicant’s proposed goods with
those of registrant. In making our determination under the
second du Pont factor, we look to the goods as identified
in the involved application and cited registrations. See
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
Ser No. 78543976
6
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”)
In this case, the goods identified in both cited
registrations, namely “golf shirts,” are included among the
various clothing items identified in the involved
application. As such, applicant’s recited goods are
identical in part to those of registrant. In addition, we
find that applicant’s recited “t-shirts, long sleeve t-
shirts, jeans, pants, jackets, hats, undergarments, tank
tops, sweaters, and button down shirts” are common articles
of clothing, many of which may be worn with “golf shirts”
and thus are closely related to registrant’s identified
goods. We also note that applicant presents no arguments
that its goods and those of registrant are dissimilar or
unrelated. Further, inasmuch as the identifications of
goods in both the involved application and the cited
registrations are not limited to any specific channels of
trade, we presume an overlap and that the goods would be
offered in all ordinary trade channels for these goods and
to all normal classes of purchasers. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992).

Ser No. 78543976
7
Similarity of the Marks
Turning to our consideration of the marks at issue, we
note initially that, "[w]hen marks would appear on
virtually identical ... [goods or] services, the degree of
similarity [of the marks] necessary to support a conclusion
of likely confusion declines." See Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994).
See also ECI Division of E-Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980). 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.
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 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 and services offered under the respective marks is
likely to result.
In comparing the marks, we find that NEW YORK NATIVE
is the dominant element of applicant’s mark and NATIVE NEW
YORKER is the dominant element in the cited marks, and
Ser No. 78543976
8
accordingly these elements are entitled to more weight in
our analysis. It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of 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. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In registrant’s marks, the term “RESTAURANT” is
disclaimed, and the term has little, if any, source
distinguishing quality and is subordinate to NATIVE NEW
YORKER both in size and significance. The minor line and
star design in both registrations is visually much smaller
than the wording NATIVE NEW YORKER. Further, the New York
City skyline design in cited Registration No. 2824536,
while significant, reinforces the wording NATIVE NEW YORKER
and is visually less prominent than such wording.
Moreover, it is settled that if a mark consists of both
wording and a design, then the wording is normally accorded
greater weight because it would be used by purchasers to
request the goods or services. See In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For these
reasons, we consider NATIVE NEW YORKER to be the dominant
Ser No. 78543976
9
feature of the registered mark. Likewise, insofar as
applicant’s mark is concerned, the outline of the State of
New York reinforces the wording NEW YORK NATIVE, which in
addition would be used by purchasers to request the recited
goods. Thus, NEW YORK NATIVE is the dominant portion of
applicant’s mark, and the portion that is most likely to be
remembered by purchasers. See In re Appetito Provisions
Co., supra.
Comparing applicant’s mark to those in the cited
registrations, we note that the wording NEW YORK NATIVE in
applicant’s mark is nearly identical to the wording NATIVE
NEW YORKER in registrant’s mark in appearance and sound.
Applicant has taken the dominant terms in registrant’s
marks, that is, NATIVE and NEW YORKER, transposed them, and
deleted “ER” from NEW YORKER. These differences do not
serve to distinguish the marks in terms of sound and
appearance. Further, we are not persuaded that reversing
the order of these terms makes a significant difference in
connotation or commercial impression. As the Board has
previously stated:
Further, the reversal in one mark of the
essential elements of another mark may serve as a
basis for a finding of no likelihood of confusion
only if the transposed marks create distinctly
different commercial impressions. See Bank of
America National Trust and Savings Assn. v.
American National Bank of St. Joseph, 201 USPQ
Ser No. 78543976
10
842 (TTAB 1978), and cases cited therein. Here,
where the goods in question are legally
identical, and where both marks, when applied to
the goods in question, are likely to be perceived
by purchasers as signifying that the product sold
thereunder busts through, or breaks up, rust, we
agree with the Examining Attorney that the marks
create substantially similar commercial
impressions, and there is a likelihood of
confusion. Cf. In re Inco, 154 USPQ 629 (TTAB
1967) [“GUARDIAN OF POSTURE for mattresses versus
“POSTURGUARD” for mattresses – registration
refused], and McNamee Coach Corp. v. Kamp-A-While
Industries, Inc. v. 148 USPQ 765 (TTAB 1965)
[“KING KAMPER” for camping trailers versus “KAMP
KING KOACHES” for campers – registration
refused].

See In re Nationwide Industries, Inc., 6 USPQ2d 1882, 1884
(TTAB 1988)(RUST BUSTER for rust-penetrating spray
lubricants confusingly similar to BUST RUST for penetrating
oil). Further, the examining attorney has introduced
evidence consisting of articles taken from the Internet
that suggest the same individuals, namely, residents of the
New York City area, refer to themselves both as “New York
Natives” and “Native New Yorkers.”
Thus, while applicant disagrees with the examining
attorney’s determination that applicant’s and registrant’s
marks have the same commercial impression, its argument on
this point is unpersuasive. Although there may be subtle
differences in the meanings of the marks when they are
subjected to close analysis, we do not believe that
consumers will undertake such an analysis. The test for
Ser No. 78543976
11
likelihood of confusion is not whether the marks can be
distinguished when subjected to a side-by-side comparison.
Also, in evaluating similarities between the marks, the
emphasis must be on the recollection of the average
purchaser who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Registrant’s
marks NATIVE NEW YORKER RESTAURANT and design and
applicant’s mark NEW YORK NATIVE and design have highly
similar commercial impressions, when used in connection
with goods that are identical in part and otherwise
related. Both marks suggest a long-term resident of New
York City or New York State.
In addition, the respective wording NATIVE NEW YORKER
RESTAURANT and NEW YORK NATIVE appears to be at worst
suggestive as applied to the parties’ goods. Thus, we find
that the similarities in sound, appearance, meaning and
commercial impression of the marks outweigh the
dissimilarities so that confusion as to source is likely to
result if used in connection with the parties’ identical
and otherwise related goods. See In re Chatam
International Incorporated, 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004).
Ser No. 78543976
12
In considering the involved marks, we have taken into
account third-party registrations of marks containing the
term NATIVE for various goods and services including
clothing items. This evidence is of limited probative
value. Firstly, the registrations are not evidence of use
of the marks shown therein and also are not proof that
consumers are familiar with said marks so as to be
accustomed to the existence of similar marks in the
marketplace. See Smith Bros. Mfg. Co. v. Stone Mfg. Co.,
476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and Richardson-
Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB
1982). Secondly, the registrations cover goods and
services which are not as closely related to those in the
cited registrations as applicant’s identified goods.4 We
accordingly find that the cited registered marks are
entitled to more than a narrow scope of protection,
particularly in the field of clothing, namely, golf shirts.
See Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d
1735, 1740 (TTAB 1991), aff’d unpub., (Appeal No. 92-1086,
Federal Circuit, June 5, 1992).

4 We note that none of the third-party registrations submitted by
applicant include “golf shirts” among the goods recited therein.
Ser No. 78543976
13
Summary
Neither applicant nor the examining attorney has
discussed any of the remaining du Pont factors. We note,
nonetheless, that none seems to be applicable, inasmuch as
we have no evidence with respect to them.
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced marks would be likely to believe, upon
encountering applicant’s goods rendered under its mark that
the goods originated with or are somehow associated with or
sponsored by the same entity.
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
registrant. See 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 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.

Rogers, Administrative Trademark Judge, in dissent:

The refusal at hand presents a number of interesting
twists on the typical analysis of likelihood of confusion,
Ser No. 78543976
14
not the least of which is that it appears neither applicant
nor registrant is located in New York (city or state).
Although applicant is organized under the laws of
Delaware and has a Greenwich, Connecticut address, it has
acknowledged that its goods will originate in the state of
New York. Thus, applicant has disclaimed the wording NEW
YORK and the line drawing of the map of the state of New
York.
Given the relative size of the map and the words, such
a disclaimer covers the vast majority of the mark, when
assessed visually. Further, even if we focus on just the
words in applicant's mark, applicant has disclaimed two of
the three words in the mark. Finally, when the only
remaining element—the word NATIVE—is considered in
conjunction with the disclaimed portions of the mark, and
in light of the identified goods, even this element has a
limited and highly suggestive meaning, i.e., "being such by
birth or origin."5 The overall impression conveyed by the
mark is that the clothing is native to New York or is that
which a New York native would wear. In sum, even if

5 The American Heritage Dictionary of the English Language p. 874
(New College Ed. 1976). The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 78543976
15
applicant's mark were registered it could not command a
broad scope of protection.
Turning to the cited registrations, each of these is
listed as being owned by Native New Yorker of America,
Inc., an Arizona Corporation located in Chandler, Arizona.
While the marks are not registered for restaurant services,
food items or even clothing identified for use in
restaurants, and are registered only for golf shirts, the
cited registrations each include a disclaimer of the word
RESTAURANT. What is one to make of two registrations for
NATIVE NEW YORKER RESTAURANT (one with and one without a
design of the New York City skyline) owned by an Arizona
corporation and which disclaim rights in the term
RESTAURANT?
First, it seems highly unlikely that clothing is
registrant's main business, if for no other reason than a
single item of clothing is unlikely to support a business.
It is more likely that registrant is actually in the
restaurant business, that its restaurant is known as the
"Native New Yorker Restaurant," and golf shirts are sold or
distributed as a collateral item. Second, insofar as one
of the marks includes a design of the New York City
skyline, it seems very likely that the words in the marks
Ser No. 78543976
16
are a reference to a New York city style restaurant or one
founded by a native New Yorker.6
Since the registrant is not located in New York and
neither registration includes a disclaimer of "New Yorker,"
it would appear that "New Yorker" was not considered
descriptive of registrant's goods when the marks were
registered. Perhaps the examining attorney who approved
the two marks for publication found the reference to be
more of a reference to a person than a place. Even so,
however, one must wonder whether a purchaser or wearer of
one of registrant's golf shirts would consider the mark
more evocative of a place (the city? the restaurant?) than
of a person.
Theoretically, the entirety of each of the registered
marks is completely arbitrary for registrant's golf shirts,
which would make the marks particularly strong. However, I
do not find the theoretical arbitrariness of registrant's
marks a particularly likely reflection of reality.
Nonetheless, I understand that the majority must pay due

6 The cited registrations each claim ownership of a prior
registration that, according to USPTO records, is for NATIVE NEW
YORKER for "restaurant services." The cited mark with the
skyline of New York city also claims a prior registration for
that same mark for restaurant services. Thus, while the majority
correctly refused consideration of evidence of registrant's use
of its marks on the internet, there is no need to resort to such
evidence to understand the context in which registrant's marks
are employed.
Ser No. 78543976
17
deference to the presumptive strength of the cited
registered marks.
In addition, I understand why the majority must
consider the very real possibility that the marks, if
spoken by consumers calling for the goods by name, might
seem very similar. Consumers could easily call for, on the
one hand, the NEW YORK NATIVE golf shirt and, on the other
hand, the NATIVE NEW YORKER golf shirt. However, just as
our case law holds that there is no correct pronunciation
of a mark, see, e.g., Han Beauty Inc. v. Alberto-Culver
Co., 236 F.3d 1333, 57 USPQ2d 1557 (Fed. Cir. 2001), and
E.I. duPont de Nemours & Co. v. Sunlyra International Inc.,
35 USPQ2d 1787 (TTAB 1995), consumers might call for the
respective golf shirts by different designations, e.g., NEW
YORK and NEW YORKER RESTAURANT, if those are the overall
commercial impressions consumers take from, respectively,
applicant's and registrant's marks. See Fero Corp. v.
Nicofibers, Inc., 196 USPQ 41, 45 (TTAB 1977) ("It is
fundamental that the commercial impression of marks depends
largely upon how the purchasers of the goods marketed
thereunder perceive them…."). Such designations are less
alike than NEW YORK NATIVE and NATIVE NEW YORKER.
More significantly, the majority cites nothing from
the record that would tend to suggest that prospective
Ser No. 78543976
18
purchasers are more likely to call for these goods by name
than to look for them on a store shelf, in a catalogue or
on the internet, or, dare I add, behind a restaurant
counter. In short, there is nothing to indicate that these
goods are typically ordered by phone or in some other
manner where the spoken words in the marks would
predominate.
While, like the majority, I must presume that the
involved goods travel in the same channels of trade to the
same class of consumers,7 I need not presume that the goods
are more likely to be called for by name. When purchased
in person, through a catalogue, or on the internet, so that
prospective purchasers would see the marks, the involved
marks look very different. Further, they are as likely as
not to suggest different meanings (New York state and a New
York City style restaurant, respectively) and present
overall commercial impressions that are different.
In the somewhat artificial world in which the Board
must assess likelihood of confusion, this appeal presents
numerous uncertainties regarding how consumers may react to
the involved marks. The majority, understandably, resolves

7 Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1005 (Fed. Cir. 2002) (“[A]bsent restrictions in the
application and registration, goods and services are presumed to
travel in the same channels of trade to the same class of
purchasers.”).
Ser No. 78543976
19
each uncertainty in favor of the registrant. It is clear,
as the majority correctly observes, that any overall doubt
about likelihood of confusion must be resolved in favor of
the owner of a cited registration. However, when numerous
uncertainties must be resolved in favor of registrant to
reach a conclusion that confusion among consumers is
likely, I cannot but wonder whether we are protecting
against a theoretical possibility of confusion rather than
a likelihood of confusion. See Bongrain International
(American) Corporation v. Delice de France Inc., 811 F.2d
1479, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987) ("The statute
refers to likelihood, not the mere possibility, of
confusion.").
I would reverse the refusal of registration and
therefore dissent from the majority's nonetheless able
opinion.