Nygard Inc.

Trademark Trial and Appeal Board

Sep 4, 2002

No. 75687474 (T.T.A.B. Sep. 4, 2002)

Mailed: September 4, 2002
Paper No. 20
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Nygard Inc.
________
Serial No. 75/687,474
_______
Henry Klein and Kevin Steinman of Ladas & Parry for Nygard
Inc.
Michael W. Baird, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
_______
Before Seeherman, Hanak and Hohein, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Nygard Inc. has appealed from the final refusal of the
Trademark Examining Attorney to register ALLISON & CO.,
with “& CO.” disclaimed, as a trademark for “women’s
clothing, namely jackets, skirts, blouses, pants, leggings,
shorts, pant suits, shirts, camp shirts, coats, sweaters,
pull-overs, cardigans, tunics, housecoats, jumpers, jump
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB
Ser No. 75/687,474
2
suits, gilets, jeans, t-shirts, t-tops, vests, tank tops,
knit tops, culottes and suits.”1 Registration has been
refused pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark ALLYSON SAN FRANCISCO, with “SAN
FRANCISCO” disclaimed, and registered for “clothing,
namely, dresses, skirts, blouses, skorts, shorts, shirts,
pants, jackets, sweaters, vests and jumpsuits,2 that, if
used on applicant’s identified goods, it is likely to cause
confusion or mistake or to deceive.
Applicant and the Examining Attorney have filed briefs
and supplemental appeal briefs.3 An oral hearing was not
requested.
Our determination is based on an analysis of all of
the probative facts in evidence that are relevant to the
1 Application Serial No. 75.687,474, filed April 20, 1999, based
on an asserted bona fide intention to use the mark in commerce.
2 Registration No. 2,208,148, issued December 8, 1998.
3 After applicant and the Examining Attorney filed their
original briefs, applicant requested remand in order to properly
make of record certain third-party registrations it had untimely
submitted with its appeal brief, and to which the Examining
Attorney had objected. Applicant also requested remand to make
of record two of its own registrations. Because the Examining
Attorney consented to the remand, it was granted, and after the
Examining Attorney considered the additional evidence and
maintained the refusal, applicant was given the opportunity to
file a supplemental appeal brief. The supplemental brief
applicant filed is simply a copy of its original brief.
Applicant is advised that if it did not wish to submit a
supplemental brief, it should have so advised the Board, rather
than cluttering the file with an additional paper that is merely
a copy of the previously filed brief.
Ser No. 75/687,474
3
factors set forth in In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
In this case, applicant’s goods are in part identical
and otherwise closely related to the goods identified in
the cited registration. Thus, the goods must be deemed to
travel in the same channels of trade, and to be sold to the
same classes of consumers, which would include the public
at large. Applicant’s arguments that the goods travel in
different channels of trade because its goods are sold in
upscale department stores or are sold to sophisticated
purchasers are to no avail.4 There are no restrictions on
the channels of trade in either applicant’s application or
the registrant’s registration, and therefore the goods must
be deemed to travel in all channels of trade appropriate
for such clothing, including discount stores. In re Davis-
Cleaver Produce Company, 197 USPQ 248 (TTAB 1977).
Similarly, because the identified clothing may include
4 Although applicant states in its brief that the exclusive
distributor of its goods is the Dillard’s Department Store chain,
the application is based on intent to use, and there is no
evidence in the file that applicant is actually using the mark.
Ser No. 75/687,474
4
inexpensive and frequently replaced items which may be
purchased “off the rack” or taken from a display without
sales help and without deliberation, and because clothing
is purchased by virtually everyone, the consumers of
applicant’s and the registrant’s clothing must be deemed to
include uneducated and impulse buyers, and not exclusively
the sophisticated purchasers posited by applicant.
We turn next to a consideration of the marks, bearing
in mind that when marks would appear on virtually identical
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines. Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
In comparing marks, it is a well-established principle
that 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). Here, ALLISON is the
dominant element of applicant’s mark, the disclaimed words
“& CO.” (that is, AND COMPANY), having little source-
indicating value. Similarly, ALLYSON is the dominant
element of the cited mark, since the disclaimed words SAN
Ser No. 75/687,474
5
FRANCISCO are geographically descriptive. When the marks
are compared as a whole, they convey a similar commercial
impression, and consumers are likely to view the
differences between the marks, in terms of the additional
words, as indicating variant marks for clothing coming from
a single source, rather than as indicating the trademarks
of two different companies. Nor is the minor difference in
the spelling of ALLISON and ALLYSON sufficient to
distinguish the marks. Whether spelled as ALLISON or
ALLYSON, the word has the same pronunciation and
connotation of a name. Although there is a minor visual
difference, because it is buried within the name, it is not
likely to be noted or remembered by consumers.
Applicant asserts that because the term ALLISON has
been registered by various third parties, ALLYSON SAN
FRANCISCO is a weak mark which is not entitled to a broad
scope of protection. The third-party registrations which
applicant has submitted in support of this position are all
for marks in which ALLISON appears as part of what appears
to be an individual’s name, for example, ALLISON WOODS,
ALLISON PAIGE, ALLISON BRITTNEY and ALLISON SMITH. The
additional name appearing in the marks serve to distinguish
them from each other, and from ALLYSON SAN FRANCISCO;
however, the descriptive term “& CO.” in applicant’s mark
Ser No. 75/687,474
6
does not have the same function. Thus, even if we accept
that the cited mark ALLYSON SAN FRANCISCO is not entitled
to a broad scope of protection, and cannot prevent the
registration of other ALLISON marks which contain some
additional distinguishing element, applicant’s mark does
not contain such an element. Simply put, the company
designation “& CO.” in applicant’s mark does not serve to
distinguish it from ALLYSON SAN FRANCISCO in the same way
that the third-party registrations for the ALLISON name
marks do.
Applicant also argues that it has a family of ALLISON
marks. To begin with, applicant’s other registrations are
not for ALLISON per se, but are all for ALLISON DALEY
(e.g., ALLISON DALEY STRETCH TECH; ALLISON DALEY NO-IRON
COTTON). These registrations, even if applicant could show
that its marks had been promoted as a family, would not
demonstrate a family with the surname ALLISON. More
importantly, an applicant cannot rely on a family of marks
in order to register a mark which is likely to cause
confusion with a previously registered mark. See Baroid
Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d
1048 (TTAB 1992).
In conclusion, because the marks are similar, the
goods are in part identical and otherwise closely related,
Ser No. 75/687,474
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the channels of trade and classes of consumers are the
same, and the goods are purchased, at least in part, by
unsophisticated consumers who may act on impulse, we find
that confusion is likely.
Decision: The refusal of registration is affirmed.