Optique PCM, LLC

Trademark Trial and Appeal Board

Nov 16, 2016

No. 86442977 (T.T.A.B. Nov. 16, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: November 16, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Optique PCM, LLC
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Serial No. 86442977
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Nigamnarayan Acharya of Baker Donelson for Optique PCM, LLC

Shavell McPherson-Rayburn, Trademark Examining Attorney, Law Office 105,
Susan Hayash, Managing Attorney.
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Before Mermelstein, Hightower and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Optique PCM, LLC (“Applicant”) seeks registration on the Principal Register of
the mark KAROO (in standard characters) for
Eye glasses; Eyewear; Eyewear accessories, namely,
straps, neck cords and head straps which restrain eyewear
from movement on a wearer; Eyewear cases; Eyewear
pouches; Frames for spectacles and sunglasses; Spectacles;
Sports eyewear; Sunglass lenses; Sunglasses in
International Class 9; and

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Retail Store services featuring eyewear products in
International Class 35.1
The Trademark Examining Attorney refused registration of the application under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s
mark so resembles the registered mark, KAROO (in standard characters) for
“women’s clothing not for children, namely, pants, shirts, dresses, skirts, sweaters,
shorts, hats, belts, gloves, sleepwear, underwear, scarves, swim wear, jeans,
outerwear, namely jackets and coats; footwear not for children” in International Class
25 as to be likely to cause confusion, mistake or deceive.
When the refusal was made final, Applicant requested reconsideration. After
reconsideration was denied, Applicant appealed. We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973); see also In re Majestic Distilling Co., 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 and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont factors now

1 Application Serial No. 86442977 was filed on November 3, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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before us, are discussed below. To the extent that any other du Pont factors for which
no argument or evidence was presented may nonetheless be applicable, we treat them
as neutral.
A. Arguments
Applicant contends that the sale of eyewear is distinct from clothing because
“substantial expertise is required to process these products” and eyewear and clothing
have different functions and purposes and may not be substituted for one another. (7
TTABVUE 8). Applicant submits that the Examining Attorney failed to provide
evidence of “something more” “to substantiate the relationship between eyewear and
retails [sic] services featuring eyewear and clothing” and that the Examining
Attorney’s Internet evidence of well-known brands that offer eyewear and clothing is
flawed because Applicant’s evidence shows that “non-famous brands do not operate
in both the eyewear and clothing space” and Applicant and Registrant are not
competitors. (7 TTABVUE 6-7, 9). Applicant argues that the ultimate consumers of
clothing and eyewear are different, which avoids confusion. (7 TTABVUE 9).
Applicant further contends consumers will not encounter Applicant’s goods and
services and Registrant’s goods in the marketplace because the actual channels of
trade or distribution are sufficiently dissimilar so as to avoid confusion. (7 TTABVUE
9-10). Applicant also argues that confusion is “likely to be fleeting and de minimis”
and Registrant’s KAROO mark is not famous. (7 TTABVUE 11).2

2 Applicant argues for the first time on appeal that the coexistence of the third-party
registration KAROOS for footwear weighs against likelihood of confusion. (7 TTABVUE 11.)
As the Board does not take judicial notice of third-party registrations during the course of an
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In response, the Examining Attorney argues that the Internet website evidence
shows that Applicant’s and Registrant’s goods are commonly provided and marketed
under the same mark and sold through the same channels of trade. The Examining
Attorney asserts that the third party registrations submitted with the February 25,
2015 Office action show the relatedness of Applicant’s and Registrant’s goods and
that they are of a type to emanate from a single source under the same mark. The
Examining Attorney also contends that Applicant’s arguments regarding the lack of
fame of the mark and de minimis confusion are not persuasive.
B. Analysis
1. The similarities or dissimilarities between the marks in their entireties,
in terms of appearance, sound, connotation and commercial impression
We first compare the marks “in their entireties as to appearance, sound,
connotation and commercial impression” to determine the similarity or dissimilarity
between them. Palm Bay Imps., 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 proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a

appeal, we have given no consideration to this registration mentioned in Applicant’s appeal
brief. See, e.g., In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). To be made of record, a
copy of any such registration must be submitted during examination of the application.

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connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).
In this case the marks are identical in sound, appearance, meaning and
commercial impression.
2. The similarity or dissimilarity and nature of the goods and/or services
Because the marks are identical, Applicant’s goods and services need not be
closely related to Registrant’s goods in order for there to be a likelihood of confusion.
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“[E]ven
when goods or services are not competitive or intrinsically related, the use of identical
marks can lead to the assumption that there is a common source.”). It is only
necessary that there be a “viable relationship” between Applicant’s goods and services
and Registrant’s goods to support a finding of likelihood of confusion. In re Thor Tech
Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
The Examining Attorney and Applicant have introduced competing third-party
registration evidence in support of their opposing arguments regarding the
relatedness of the goods and services. The Examining Attorney introduced
registrations showing that entities have adopted a single mark for both types of goods
and services involved herein.3 Applicant countered with a list of registrations which
it asserts shows that different entities have adopted a single mark solely for either

3 We point out that most of these third-party registrations do not appear to be “designer” or
well-known marks: SKINZEE, MARTINI, THREE MONKEYS EYEWEAR, POKER FACE,
FIRST KISS, 'A MOI, CITY SPORTS, STAY WILD, and WF.
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Applicant’s products or Registrant’s products.4 Applicant submits that this listing
establishes a lack of relatedness as “numerous brands do not operate in both the
eyewear and clothing space.” (7 TTABVUE 8). However, the problem with Applicant’s
list of third-party registrations is that it does not negate the Examining Attorney’s
evidence serving to suggest that third parties identify the goods in the cited
registration and involved application under a single mark.
There is no requirement for goods to be found related that
all or even a majority of the sources of one product must
also be sources of the other product. Therefore, evidence
showing only that the source of one product may not be the
source of another product does not aid applicant in its
attempt to rebut the evidence of the examining attorney.
Second, the mere fact that some goods are not included in
a registration’s identification of goods does not establish
that the owner of the mark has not registered the mark for
those goods in another registration since, for example, the
registrant may have begun using the mark on those goods
at a later date. Third, the law recognizes that trademark
owners have different marks that are used as a house
mark, a mark for a line of products, and a mark for specific
items. It is, therefore, to be expected that many
registrations for marks would not cover all of a party’s
goods and services. … The fact that applicant was able to
find and submit for the record these registrations of marks
for individual items does not rebut the examining
attorney’s evidence showing the existence of numerous
third-party registrations using the same marks on a
variety of items, including applicant’s and registrant’s
goods. Therefore, contrary to applicant’s argument …,
while this evidence provides some indication that there are
many trademarks that are not registered for both products,

4 In its August 25, 2015 response to Office Action, Applicant provided a listing of third-party
registrations from the USPTO database to support its assertion of lack of relatedness. The
Examining Attorney did not advise Applicant that the listing was insufficient, so we have
considered the list. In re Houston, 101 USPQ2d 1534, 1537 n.7 (TTAB 2012). However, the
list is of no probative value since it does not show the goods or services for which the marks
were registered. In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007).
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it does not rebut the examining attorney’s evidence that
the goods are related.
In re G.B.I. Tile & Stone Inc., 92 USPQ2d 1366, 1370 (TTAB 2009). To the extent that
Applicant argues that the third-party registrations submitted by the Examining
Attorney are not probative, and are “of limited value” we disagree. 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 services are of a
type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993).
Applicant also has criticized the Examining Attorney’s website evidence which
consists of webpages related to three designer brands that offer clothing and eyewear
under the same mark (Kate Spade, Gucci and Tommy Hilfiger). We find this evidence
has some probative value to show that the Registrant’s clothing and Applicant’s
eyewear (e.g., sunglasses and eyeglasses) are complementary products in that
consumers may purchase eyewear as a fashion accessory. The Gucci website includes
models who are wearing glasses or sunglasses with the clothing and other fashion
accessories as does the Tommy Hilfiger website. Applicant’s webpage evidence
regarding designer eyeglasses and sunglasses further supports this conclusion. In
particular, these pages include statements such as “Brands for Every Style. Find
Yours.” “Find Your Perfect Look. Frames To Suit Every Style” and “Eyewear Trends
Inspiration for Your Next Perfect Pair.” See, e.g., Catalina, Inc. v. Miller, 123 USPQ
460, 461 (TTAB 1959) (“[P]urchasers familiar with ‘CATALINA’ sportswear,
swimwear, and accessories would be quite likely to assume that ‘CATALINA’
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sunglasses originated with or are in some way connected with the same producer.”);
cf. Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1640 (TTAB 2007) (finding
women’s clothing and fragrances closely related and complementary products which
are used together for the same purpose to enhance physical appeal and create overall
fashion image); Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618
(TTAB 1989) (shoes and hair care products fall within the broad category of fashion
aids as they are both used to present oneself in a desired, stylish manner; they are
related to the extent that the goods are part of the overall fashion picture which
encompasses dress and beauty aids); Clairol Inc. v. Topaz Hosiery Mills Inc., 161
USPQ 545, 546 (TTAB 1969) (relatedness of dress (hosiery) and beauty aids (hair
coloring), “purchased by women whose desire to purchase is obviously motivated by
woman’s inherent quest for beautification, the desire to be stylish”). The Gucci
website evidence submitted by the Examining Attorney also indicates that clothing
and sunglasses may be sold on the same website in connection with online retail store
services, further evidencing the relatedness of Registrant’s goods and Applicant’s
retail store services. See, e.g., Catalina, Inc. v. Miller, 123 USPQ at 461 (in many
instances sunglasses and sportswear and accessories are promoted together and sold
in the same departments).
3. Similarity or dissimilarity of established, likely-to-continue trade channels
Applicant has argued that the actual trade channels through which its goods and
services move are different from those in which the goods specified in the cited
registration travel and that the ultimate consumer is different. However, neither the
registration nor the application reflects any such restrictions or limitations. In the
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absence of such language, we must presume that the cited registration and the
application encompass all of the goods and services of the type described in the
application and registration, that the goods and services so identified move in all
channels of trade normal for those goods and services, and that the goods and services
are available to all potential purchasers of such goods. See In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where
the identification is unrestricted, “we must deem the goods to travel in all appropriate
trade channels to all potential purchasers of such goods”).
4. Fame
As to Applicant’s arguments regarding the purported lack of fame of Registrant’s
mark, the fifth du Pont factor, this is of little consequence. In an ex parte appeal the
“fame of the mark” factor is normally treated as neutral because the record generally
includes no evidence as to fame. In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204
(TTAB 2009) (noting that the absence of evidence as to the fame of the registered
mark “is not particularly significant in the context of an ex parte proceeding”). We
find this to be the case here. Further, although evidence of fame strongly supports a
finding of likelihood of confusion, its absence only rarely suggests that confusion is
not likely. In re Majestic Distilling Co., 65 USPQ2d at 1205.
5. Extent of Potential Confusion
Lastly, Applicant’s contention that the extent of potential confusion is de minimis
is unsupported. Because these goods are frequently purchased by the public at large,
and as Applicant acknowledges they are available in the general marketplace, the
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number of overlapping potential purchasers and the potential for confusion is not de
minimis. This du Pont factor also favors a finding of likelihood of confusion. Cf.
Calypso Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1223
(TTAB 2011) (extent of potential confusion de minimis due to limited number of
overlapping potential purchasers and their sophistication).
II. Conclusion
In sum, the du Pont factors, on balance, weigh in favor of the Examining
Attorney’s position that there is a likelihood of confusion between Applicant’s mark
and the registered mark for the respective goods and services listed therein.
Decision: The Section 2(d) refusal to register Applicant’s mark KAROO is
affirmed.